Can’t I Just Do It Myself?

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What you need. What we know.™ – Trademarks: The Application

 You need to know why you shouldn’t save the attorney fees by preparing and filing a trademark application​ yourself, or why you shouldn’t just click on that “Register My Mark”  for $69 + government fees button for the website you found. With each of these options, once your application is filed, you go it alone through the next 12-18 months that it can take for the USPTO to prosecute your application and decide whether your mark will be registered.

Preparing and filing a trademark application might seem easy. Trademark law, however, is not. The United States Patent and Trademark Office (USPTO) lets individuals file trademark applications, but it officially encourages applicants to use a trademark attorney whenever possible.

Why? The USPTO will issue Office Actions and refuse to register marks based on one or more of the following that even non-trademark attorneys don’t properly understand:

Likelihood of Confusion

  • Do you know whether your mark will create a likelihood of confusion with another mark? Do you know how to perform a proper trademark search to try to figure it out?

 Acceptable Identification of Goods and Services

  • Do you know what an acceptable description is for your goods and/or services?  It might not be what you think.


  • Do you know what constitutes an acceptable specimen?

 Use vs. Intent-to-Use

  • Do you know what “bona fide use in the ordinary course of trade” means?

 A trademark attorney can help you with any and all of the above and guide your application through prosecution.

What You Need. What We Know.TM

icpdfRetaining An Attorney to Prepare and File Your Trademark Application.pdf


About the Author:

Barbara Alexander is licensed to practice law in California (2002), Georgia (2010), and Nevada (2001). Her passion for intellectual property dates back to the mid-90s when she returned from living in Dublin, Ireland to work for a Boston-based venture capital firm, investing in life sciences and technology companies. Attending law school in Washington, D.C. at Washington College of Law, American University from 1998-2001, Barbara’s legal training focused on federal law – of which trademark, copyright, and patent are a significant part. Barbara started Alexander Legal LLC in January 2014 to offer clients more personalized service at a better price point than larger firms can offer.
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