A trademark attorney checks whether your brand name is safe to use, files the federal application, answers the USPTO when an examiner refuses it, and handles disputes with other trademark owners. What does an intellectual property lawyer do more broadly? That depends on the branch: trademark lawyers protect names, logos, and slogans, patent lawyers protect inventions, and copyright lawyers protect creative works. Many IP lawyers handle more than one branch, but the licensing rules differ, and those rules decide who can represent you at the USPTO.
What Does an Intellectual Property Lawyer Do Day to Day?
An intellectual property attorney is a lawyer who advises on the legal rights in things people create or use to identify a business. For a trademark attorney, most weeks are a mix of five kinds of work:
- Clearance searches and opinions on whether a new name is available
- Preparing and filing applications with the USPTO
- Responding to office actions, which are letters from the examiner raising problems with an application
- Oppositions and cancellations at the Trademark Trial and Appeal Board (TTAB), the USPTO’s tribunal for trademark disputes
- Enforcement: sending and answering cease and desist letters, negotiating settlements, and filing or defending lawsuits
A small business usually needs the first three once per brand. The last two come up when someone else uses a name close to yours, or claims you are using a name close to theirs.
Clearance Searches and Legal Opinions
A clearance search looks for existing marks that could block your application or lead to an infringement claim. A trademark attorney searches the USPTO database for registered and pending marks, then usually looks at state registrations, business names, domain names, and unregistered use online.
The attorney’s opinion turns the search results into a decision: which results are close enough to cause trouble, which goods and services overlap with yours, and how likely an examiner is to see a conflict. The opinion is usually a written memo that rates your risk and may suggest changes to the name or the description of what you sell.
You can run a first search yourself. The guide to doing a trademark clearance search before you file walks through the free tools and what to look for.
Filing and Managing Applications
The USPTO lists these as core services a private trademark attorney provides: deciding whether your mark can be protected, preparing a complete application, and identifying your goods and services accurately.
In practice, filing work covers:
- Choosing the filing basis: use in commerce, or intent to use if you have not launched yet
- Picking the right classes and writing the goods and services description
- Preparing the drawing of the mark and, for a logo, a written description of the design
- Filing specimens, which are samples showing the mark as customers see it
- Tracking deadlines through examination, publication, and registration
- Filing the maintenance documents that keep a registration alive after it issues
The goods and services description takes the most judgment. Too broad, and the examiner asks you to narrow it. Too narrow, and your registration may not cover products you add later.
Responding to Office Actions and Oppositions
An office action is a letter from the USPTO examining attorney explaining why the application cannot register as filed. Some office actions ask for small fixes, such as a clearer description or a disclaimer of a generic word. Others refuse the mark outright, most often because it is too similar to an existing registration or because it only describes the product.
A trademark attorney answers a refusal with written legal argument and evidence, such as proof that the goods are sold to different customers or that other businesses already use similar terms. You can often answer a request for a small fix yourself; a substantive refusal is much harder to overcome without a trademark attorney. The article on how to respond to a trademark office action covers the common refusal types.
After the examiner approves your mark, the USPTO publishes it, and anyone who believes they would be harmed can file an opposition at the TTAB. An opposition works like a short lawsuit, with pleadings, evidence, and briefs. Trademark attorneys file oppositions for clients and defend against them. The guide to how trademark oppositions work explains the stages and your options if you receive one.
Enforcement: Cease and Desist Letters and Disputes
Once you own a mark, a trademark attorney can help you stop others from using a confusingly similar name. The first step is usually a cease and desist letter, a written demand that the other business stop. Many disputes end at that stage with a name change, a phase-out period, or a coexistence agreement that sets out how both businesses can use their names.
If the other side refuses, the attorney may file an infringement lawsuit in federal court or a cancellation petition at the TTAB against their registration. If you are the one accused and a letter has arrived at your business, read what to do after a trademark cease and desist letter before you reply.
Some trademark attorneys also run watch services that alert you when someone files an application for a similar mark, so you can oppose it before it registers.
Trademark Attorney vs. Patent Attorney vs. General IP Lawyer
The main difference is licensing: to represent you before the USPTO in trademark matters, a lawyer needs only an active license in good standing from the highest court of any US state, the District of Columbia, or a US territory. There is no separate trademark exam, and the USPTO does not keep a roster of trademark attorneys. You check a trademark attorney’s license through the state bar’s online directory.
To file and argue patent applications at the USPTO, a person must meet the agency’s scientific and technical requirements and pass the USPTO registration examination, often called the patent bar. A lawyer who passes is registered as a patent attorney. A non-lawyer who passes is a patent agent.
| Trademark attorney | Patent attorney | Patent agent | |
|---|---|---|---|
| Protects | Names, logos, slogans, trade dress | Inventions and designs | Inventions and designs |
| State bar license | Required | Required | Not required |
| USPTO registration exam | Not required | Required | Required |
| Science or technical background | Not required | Required | Required |
| Can represent you in trademark matters | Yes | Yes, as a licensed attorney | No |
Do You Need a Patent Attorney for a Trademark?
No. Any licensed US attorney can handle your trademark filing, and patent registration adds nothing to a trademark case. Patent and trademark attorneys who do both kinds of work are common, especially at IP firms, and a patent trademark lawyer is fine to hire for a brand as long as trademarks are a regular part of the practice. Ask how many trademark applications and office actions the lawyer handles in a year.
Is There a Trademark Agent in the US?
The US has no licensed trademark agent role: under 37 C.F.R. § 11.14, people who are not attorneys cannot practice before the USPTO in trademark matters. The rule keeps two narrow exceptions: non-lawyers who were already recognized before January 1, 1957, and trademark agents from countries with a reciprocal agreement with the USPTO, who must still work alongside a US attorney who files the documents. Law students in the USPTO’s law school clinic program can also get limited recognition while supervised.
Other countries license non-lawyers: in the UK, a Registered Trade Mark Attorney (also called a Registered Trade Mark Agent) is a regulated professional who does not need to be a solicitor or have a law degree. If a US business sees “trademark agent” on a website, that person is either a US-licensed attorney using a loose title, a foreign professional, or someone who cannot lawfully represent you at the USPTO.
Trademark Attorneys vs. Filing Services
A filing service is a company that fills out and submits trademark forms for a fee. The USPTO says plainly that trademark filing companies are not law firms, and it does not endorse any of them.
A filing service can type your information into the form. Unless a licensed attorney is doing the work, it cannot legally:
- Tell you whether your name is likely to be refused or to infringe someone else’s mark
- Choose your classes or draft your goods and services description based on your business
- Sign and file on your behalf as your representative
- Argue against a refusal in an office action response
- Represent you at the TTAB in an opposition or cancellation
- Send a cease and desist letter as your lawyer or defend you in court
The USPTO warns that a filing by someone who is not authorized to represent you can lead to a rejected or abandoned application, or a canceled registration. It also warns that a company asking you to file through your own USPTO.gov account, instead of its own, is likely a scam, and that you should never share your password.
If you live in the US, you can file your own application without any representative. If you live outside the US, the USPTO requires a US-licensed attorney to represent you.
Deciding Whether You Need One
You can often handle a trademark alone if the name is distinctive, your search turned up nothing close, and you sell in one or two well-defined classes. A trademark attorney is the right call when the search shows similar marks, when the examiner issues a substantive refusal, when someone opposes your application, or when you send or receive a demand letter.
Before you hire, the guide to what a trademark attorney costs lists typical flat fees for each service above, and the article on how to choose a trademark attorney gives you 12 questions to ask on the first call.