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Wednesday, 10 August 2016

Why You Should Hire A Trademark Attorney

CONSIDERING TRADEMARK REGISTRATION IN UGANDA? THIS IS WHY YOU SHOULD HIRE A TRADEMARK ATTORNEY

Trademark owners who attempt to file and prosecute their own trademark applications work on the believe that by not hiring a trademark attorney, they will save on the attorney fees. From experience, these trademark owners end up spending more money in the process. They make many mistakes in the process and pay trademark attorneys later on to correct the mess. It is understandable that many times, this group of trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non trademark attorneys.

I have attended to many clients that have filed their own trademark applications, and some that have used non-attorney services. These clients are usually up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application, or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them. In over 60% of the cases, I have had to file fresh trademark applications on learning that the non-trademark attorney did not file the right documents or missed a crucial stage in the process that rendered what was done of no effect.

Trademark owners may believe that filing and prosecuting a trademark application is a simple process. Admittedly, the filing of a trademark application is much more straight forward if the necessary steps are followed properly. Simple steps like trademark clearance may be ignored only to realize at a later stage that the trademark you are filing is already in existence or that it is similar to what is already in existence. The result is that you will face oppositions to your Applications. Even if you succeed in filing, the earlier registered trademark owners petition trademark office for cancellation of your trademarks.

Proper filing and issued trademark can provide the trademark owner with significant protection for their intellectual property. For example, trademark portfolio for “Coca-Cola”. Coca-Cola has hundreds of trademarks and trademark applications all over the world. The brand is protected by numerous trademarks. 

Trademarks are so important because they identify the source of a particular good or service. The trademark owner, if they do it right, has associated their good or service with a particular level of quality that they work hard to maintain. If the trademark owner does not protect their trademark, they may open themselves up to the danger of an inferior quality good or service being distributed under the same or similar name. Such acts cause consumer confusion in the marketplace and leads to dilution of the earlier trademark that was not protected through proper registration. Therefore, it is important for the trademark owner to file the application properly. The trademark owner should not rely on the services of non-trademark attorney to help them through the registration process. 

The safest bet is to hire an attorney familiar with trademark prosecution to handle protecting your trademark assets. Of course, this means paying a legal fee, but I believe the legal fees involved in having an experienced attorney prepare, file and prosecute a trademark application pale in comparison to the cost of not having a properly protected trademark. This post is prompted by the recent increase I have encountered of fixing, or sometimes re-filing, trademark applications that have either been filed by the trademark owners themselves, by attorneys that do not specialize in trademark prosecution, or using the “assistance” of some websites that purport to file trademark applications for the trademark owner, without providing legal advice.