I have frequently worked with clients that reported their problems with non-legal trademark services such as LegalZoom and Trademarkia. I think you are better off filing your own trademark application instead of hiring one of these services. However, neither of these options gives you the best chance to succeed when it comes to protecting your trademark. Your trademarks are too valuable to your business to gamble on these approaches, so having anyone who is less than qualified filing your trademark application (including you) should not be acceptable. Here are the Top 3 issues I see with the DIY trademark approach:
1. The DIY Trademark Search Is Not Sufficient
The search for a brand name, slogan, and other trademarks should begin with a knockout trademark search. This is a preliminary trademark search that you can conduct yourself. The purpose is to try and determine if your trademark may infringe upon an existing trademark. It can also help you to determine whether you would be able to successfully register your trademark with the U.S. Patent & Trademark Office. However, it is not a comprehensive trademark search. For that, you need to work with an experienced trademark attorney.
So what is the real risk of only conducting your own search? Time and money. Two of the most precious resources to a new business. If you rely on a DIY trademark search that you performed on your own, you can easily miss confusingly similar trademarks that are already registered. That means that (1) your application will be rejected and you forfeit the hundreds of dollars you spent in filing fees; and (2) you lose the 8-10 months it typically takes the Trademark Office to review your application for such conflicts. So if you want to get a trademark registration, you now have to start over, and pay hundreds more for your next application, then wait several months to see if it gets approved.
Hiring a trademark attorney to perform your search up front makes more sense. They can let you know if your application is likely to succeed. That way, you don’t spend money on a trademark application that had no chance of success in the first place. And you will also avoid wasting time waiting for the Trademark Office to reject your application based on a conflict that would have been uncovered by a search conducted by an experienced attorney.
2. Mistakes On Your Trademark Application Can Be Costly
Most people who take the DIY trademark approach to applications are probably given false confidence from the USPTO website. It is designed to be extra user-friendly. It has a lot of good information, and instructions for people that want to do their own trademark work. The online trademark application form is not overly daunting at first look, either. But filing the application is deceptively simple, and it is easy to make costly mistakes.
What DIY trademark applicants don’t realize is that your application may be voided if you give incorrect information. Even if your application is officially approved, that means it will be subject to cancellation by other parties. In other words, it won’t be worth the paper it’s printed on. The Trademark Office often cannot tell when bad information has been given. So this is the most dangerous part of filing yourself: you won’t know your registration is worthless until you need it most.
When someone challenges your registration (such as in a cancellation proceeding), they can look for holes in your application. More precisely, their attorney will be inspecting it for any problems. And if there was anything wrong with it, you can be sure that they will find those problems and can use them to cancel your registration. New business owners frequently file their own application, get the trademark registration, and spend years developing their brand, just to have their registration cancelled because there was an error on the initial application. Don’t let that happen to you.
3. Getting Through the Application Process
Filing a DIY trademark application is short-sighted. Not just in the sense that it risks valuable business assets in order to save money. But also because most DIY filers do not realize that filing a federal trademark application is just the beginning of a longer process.
How do you respond to an office action? What do you need for a Statement of Use filing? When should you even file the Statement of Use? Someone that has never filed a trademark application most likely does not know the answers. The registration process often consists of many steps and deadlines. If the idea is to file the application and just receive your registration several months later, then that is wishful thinking.
If you don’t respond to issues that come up on time, your application goes abandoned. Incorrectly addressing issues that come up can also mean that your application goes abandoned. While business owners filing their own applications may struggle just to start the race, a knowledgeable trademark attorney can help not only to cross the finish line, but to ensure that your federal trademark registration can stand up to challenge once the race is over.
Have You Decided That Filing Your Own Trademark Application Isn’t Worth the Risk?
I know that my clients, as new businesses, have to make tough decisions when it comes to their finances. That is why I provide affordable flat-fee rates for my services. If you would like to discuss these matters with me, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
