Trademark Registration: Hire an Attorney or use LegalZoom/Trademarkia?
As trademark attorneys, our focus is on helping clients protect their brands through trademark registration and enforcement. A large part of this work consists of assisting clients who have previously attempted a trademark registration, either through self-help services like LegalZoom or through other lawyers who do not focus on trademark law.
When you are protecting something as important as your business or product’s brand name, saving a little bit of money up front will often end up costing you much more down the road. While cheaper do-it-yourself services may seem like an attractive and cost-effective solution, going through the trademark process without an attorney’s help can have serious negative consequences. I’ve outlined a few of those below.
Without professional guidance through the trademark registration process, there are a number of easily avoidable mistakes that you can make. The more common mistakes often include:
Failing to properly clear the trademark against existing marks.
The clearance search that LegalZoom charges extra for is both woefully inadequate and borderline worthless. It does not even check against abandoned trademark applications, which are often the most important applications to look at. For example, if someone tried to register your exact same trademark last year and it was rejected, wouldn’t you like to know that? Wouldn’t you want to see exactly why it was rejected so you could avoid the same mistakes it made? Well, too bad if you use LegalZoom, because its paid clearance search does not include that feature.
Performing an inadequate analysis of the search results.
The second important feature that LegalZoom’s clearance search does not include is an actual attorney’s legal analysis of the results. All LegalZoom does is run a basic search of your trademark and dump a hundred pages of search results in your lap. It provides you no legal guidance on how to analyze the results, nor any analysis on whether the results mean you should or should not apply for the trademark. I have people call me on a weekly basis asking to hire me solely to analyze LegalZoom’s clearance search results for them. I tell them that it will be cheaper to start over from scratch and to consider the LegalZoom fees a loss.
Additionally, LegalZoom’s clearance search that purports to do an up to date and comprehensive state trademark search is useless. In order to test it out, I tried it myself and paid LegalZoom to do a clearance search on a trademark that I had already previously registered in California. Despite paying LegalZoom to do a state court clearance search on the exact same trademark name as what I had already registered in California, LegalZoom did not find or identify my previous California registration in its search results. This could have resulted in a trademark infringement lawsuit against me had I relied on LegalZoom’s clearance search to determine if anyone else owned the trademark rights to the term.
Failing to draft the description of goods or services properly.
Neglecting the proper drafting of your trademarked goods or services description could lead to a denial of your registration or infringement on other marks. Even if your application is approved by the USPTO, the description you wrote could expose you later to penalties for fraud in the trademark office if it inaccurately describes the goods you sell in commerce. An experienced trademark attorney will work with you to come up with a strategy and draft your description. This can greatly help to protect your brand while avoiding overlaps with other marks.
Failure to Register the Trademark in the Correct Class of Goods.
There are 45 different International Classes to choose from when registering your trademark. It’s easy to confuse them. For example, I’ve seen a video game company register its production studio trademark in class 9 for “video game software”. However, they should have been in class 42 for video game production services. Their entire application was rejected outright because the trademark examiner ruled that they were selling services, not goods, and that their description could not be amended to include services.
Submitting improper specimens and evidence of your trademark use.
With every trademark filing, some proof of your use needs to be submitted before registration. Trademark attorneys will work with you to prepare the right trademark specimens to submit with your application. An experienced attorney will go beyond that, and assist you in molding your branding (whether it’s a website, product packaging, or business card) into a strong and distinctive trademark. Do-it-yourself services and firms not focused on trademark law often get this specimen requirement wrong, causing the application to be rejected, or, at best, significant delays and extra fees during the approval process.
Law Firms Offer Ongoing Support
Trademark registration is an ongoing and lengthy process that does not end with the initial filing. A dedicated trademark attorney can provide ongoing support in a number of ways, including:
- Updates and explanations of each important milestone leading up to and following registration of your trademark.
- Dedicated paralegal support to keep track of your application and to ensure that vital deadlines are not missed.
- Availability to answer any questions that you have throughout the trademark registration process.
- Guidance on any Office Actions released by the trademark office, many of which an attorney may respond to and resolve at no extra charge.
- The peace of mind in knowing that you did everything you could to protect your brand and product.
Should you even file in the first place?
One of the biggest issues in trademarks is the strength of the mark and whether it is a good candidate for registration. Experienced trademark attorneys can assist you in analyzing your mark prior to filing the application. Often, they take a holistic approach to analyzing your business, your products, your competitors and the market as a whole.
In some cases, the best course of action is not to file the mark. If you’d gone through LegalZoom without this analysis of your business’s trademark, you may be wasting money on filing and other fees. This money could be better spent developing a new brand with a strong trademark, as advised by your trademark attorney. Our firm has advised many potential clients against filing a trademark registration. We would rather lose the business than file an application that is bound to fail.
Mistakes in the filing process are usually avoidable with the right guidance. If your trademark application is rejected because you filed with LegalZoom, then you’ve lost the fees paid to LegalZoom, the government filing fees, and even sometimes the loss of your priority filing date. Filing a trademark registration is far more than simply filling out a form online. A big part of the process is investigating your proposed trademark, your competitors’ trademarks, and your industry as a whole. Self-help services that simply provide you a better user interface for filling out the paperwork yourself, like LegalZoom and Trademarkia, often cause more problems than they solve. It is much wiser to spend a little extra for a real attorney who focuses on trademark law.
Of course, even an experienced trademark attorney cannot guarantee that a trademark application will be registered. No one who has been in the business long has a 100% success rate. However, a trademark attorney who regularly files applications can reduce the reasons for rejection. Given the numerous pitfalls and inherent uncertainty in every trademark application, the best course of action is to avoid the do-it-yourself services.