You’ve heard about the value of having a registered trademark – a word, phrase, symbol, or design that identifies and distinguishes your brand and prevents someone else from trying to capitalize on the good reputation you worked hard for. Maybe you’re ready to take the plunge and apply for trademark registration with the United States Patent and Trademark Office (USPTO). As an entrepreneur, you want to save cash when possible, so you’re thinking about filing the application yourself or going through Legal Zoom. After all, how hard can it be, right?
Wrong. There are a lot of pitfalls when not using a licensed attorney specializing in trademark law. Here are a couple of reasons why you should seek the help of a professional when filing your federal trademark application.
- The trademark you intend to register might not be trademarkable at all.
There are specific factors that enable you to register a logo, slogan, or business name with the USPTO. If your proposed mark fails to meet those factors, your mark isn’t eligible for registration. Without an expert analysis of your intended mark, you may end up investing significant capital into the creation and registration of the mark, only to have your application rejected because it’s not protectable under trademark law.
- You don’t have the knowledge to conduct an expert trademark search and analysis of their results to make sure there are no pre-existing registrations that hinder your chances of achieving registration.
There are a lot of third-party websites that will conduct a trademark search for you to see if anyone else may be using a similar mark, but these services don’t provide a one-on-one legal analysis of the results and their implications on your prospective mark. Only a trademark attorney can evaluate the numerous factors at play, such as whether the proper classifications are being searched, who has priority rights based on first use in commerce dates, or whether there’s a likelihood of confusion with existing marks. If you don’t get a proper analysis of the search results, you are much less likely to have success during the application process.
- If the USPTO rejects your application, you didn’t end up saving money – you wasted it.
It may seem like a steal to file an application yourself and only pay the $225/class USPTO filing fee. Studies show that marks filed without a trademark attorney only have a publication rate of about 60%, while over 80% of applications filed by trademark attorneys reach publication. The application examiner can issue office actions where they ask questions about the mark or require a legal argument for why it should be allowed to proceed to publication. Only a professional will know how to appropriately respond when office actions are processed, and data reveals that about 60% of applications received at least one office action. This means it’s more likely than not that you’ll get questions from the USPTO about your application which only a professional can aptly answer.
- The USPTO has strict, specific requirements when it comes to supplying the correct information on a trademark application.
When submitting a trademark application, it’s important to provide valid examples of specimens showing the mark being used in connection with the goods and/or services you’re registering under. There are specific guidelines for how to take and submit website screenshots, photos, and other evidence of your use of the mark. The USPTO also requires the submission of specific dates surrounding your use of the mark. Failure to understand the guidelines for what qualifies as a “use in commerce” date, for example, can lead to legal trouble since signing a trademark application includes an oath where you swear the data you supplied is correct. If you misunderstand the requirements and it’s later revealed that your information was inaccurate, your mark can be canceled, and you may be liable for fraud.
- Legal Zoom can’t analyze your long-term expansion goals and identify potential pitfalls of a prospective mark.
You may register your trademark in a certain classification of goods or services for the time being, but what happens when you want to expand your services down the road and apply for trademarks in other business areas in the future? There may exist other marks already registered in those classifications that prevent you from taking your services to the next level, and your mark becomes a limiting factor for your business.