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What Do Trade Mark Attorneys Do?

Registering a trade mark can feel somewhat expensive for an on-a-budget startup! Therefore, hiring a trade mark attorney can seem out of reach when you are paying for all your other “legals”.

But self-filing your trade make does not necessarily mean that you will save on money or time. If it is not done right, you can have your trade mark application denied and lose your filing fee. You may need to start the whole process all over again, duplicating your expenses. This can also mean spending a lot of your time responding to issues raised by the Trade Mark Examiner instead of focusing on running your new business.

There is also a risk of spending a substantial amount of money and time on developing your brand without realising that your trade mark is owned by another person or business and thereby incur later the far larger expenses of rebranding.

Trade mark attorneys can assist you at all stages of the trade mark application process because of their experience prosecuting trade marks before the Trade Marks Office. A trade mark attorney can assist you with the following:

Clearing Your Proposed Trade Mark

Trade mark attorneys can provide an opinion on whether a trade mark would be suitable for protection or whether the mark will be infringing or is at risk of infringing an existing mark. There are processes in place to properly search the Register for conflicts and identify any problems that might arise with your trade mark application.

A trade mark attorney can also evaluate the strength of your trade mark, advise you on choosing a distinctive trade mark for your branding purposes and how you should use and protect your trade mark as an “intangible asset”.

 Preparing Your Trade Mark Application

A trade mark attorney will collect and assemble the relevant details from you to make sure that your application will meet all the requirements of the Trade Marks Office. The attorney will then file your trade mark application on your behalf ensuring that your trade mark is properly filed in the correct classes for the products or services that you supply or that you may supply in the future.

 Prosecuting and Monitoring Your Trade Mark

During the application process, the Trade Mark Examiner may issue adverse reports, office actions or make a request for additional information. Your trade mark attorney can respond to and handle these issues and requests on your behalf. If your trade mark application is denied, a trade mark attorney will advise you on what steps you can take to respond to that problem.

A trade mark attorney will also help you to enforce your trade mark rights in the future, assist with monitoring new trade mark applications and advise you on what you can do if your trade mark is infringed or when it may be appropriate to start opposition proceedings against a competing trade mark. Affirmative action to protect your trade mark rights might include sending a cease and desist letter or, if further action is needed, obtaining injunctive relief and possibly an account of profits or damages.

Your trade mark may be one of your business’ most valuable property. Seeking advice and assistance will help ensure that your trade mark application is as smooth and efficient as possible.

Take Away Points

  • A trade mark attorney is familiar with the trade mark registration process and can handle registrations efficiently;
  • A trade mark attorney can conduct a more thorough trade mark search and evaluate the strength of your mark and advise you on the likelihood of the success of your trade mark filing;
  • A trade mark attorney will prepare and file your trade mark application and respond to issues that come up after your application has been filed and assigned to a Trade Mark Examiner;
  • After a mark application is granted, a trade mark attorney will assist with routine monitoring for unauthorised uses of your trade mark and act on them on your behalf;
  • Although you can register your trade mark on your own, there might be different reasons why it can go wrong. Getting assistance from a trade mark attorney can help you save time and money when filing a trade mark application.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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