Role of a Trademark Attorney

What is a Trade mark?

A trademark is a mark that distinguishes the goods and services of one person, from the other. It helps consumers differentiate between the myriad brands available in the market today. It confers upon the holder, an exclusive right to use a word or device to distinguish his products from those of others. A trademark is territorial in nature, thus, if the trademark is registered in India, it can only be protected within the Indian jurisdiction.

For registering the trademark, it is essential to file a trademark application under the Chapter III of the Trademark Act,1999. Statutory protection of trademark rights in India is administered by the Office of the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.

Role of a Trade Mark Attorney

While the online registration process of a trademark looks like an easy process, it contains intricate nuances which only a trained and professional practitioner would know. Therefore, it is always advisable to hire a knowledgeable Trademark Attorney, when registering one’s trademark.

The most important role of a trademark attorney is to advice their clients regarding protection of their company and brand names. They help the clients choose appropriate trademark. This is done by conducting an exhaustive Trademark Search for existing marks. A Trademark Attorney also councils the clients with appropriate course of action in case of an infringement or a dispute.

The trademark attorney guides the clients through various legal aspects of introducing a new product or service into the market. They also draw and review contracts related to trademark management. A trademark attorney is well versed in the industry standard of the trademark application procedure and help clients navigate the same.

The application process of a trademark begins with a Trademark Search- Searching for similar or identical marks in the Trademark Database. If there are no similar marks already registered, then a trademark application is filed by the attorney. In case the Registrar objects [Examination Report] to the registration, the Trademark Attorney files a Reply to the objections [Reply to the Examination Report]. In case the mark is opposed by a third party, the Trademark Attorney defends the mark before the Registrar and files the evidence in support of application.

Once the Trademark has been registered, the Attorney manages and protects the registered mark by keeping a lookout for potential infringements. They take appropriate action in case there is an infringement of the mark by another person. It is a trademark attorney’s responsibility to keep up to date with the renewal of the trademark (every 10 years). They also advice the clients on the licencing and assignment of the mark.

Conclusion

The trademark registration is one of the most important steps in making a business successful. It helps one safeguard one’s mark, and thus, reputation, from unauthorized use. While anyone can file a trademark application, consultation with a professional trademark attorney is always more beneficial. The management of a trademark requires lots of time and effort, therefore the benefits of a professional trademark attorney that has the requisite expertise in the trademark laws and industry practises, cannot be emphasized enough. They can help guide one through the nuanced and complicated process of trademark registration and make informed decisions.