I often get questions along the lines of, “Can I do this myself?” Most recently the questions center around, “Can I attempt a trademark registration of my name/logo/brand?” Admittedly, I do play for Team Lawyer; however, even if I did not play for the team, I would still answer with a strong “No Way!” Just because you can does not mean that you should. Here are my Top 5 reasons why you should leave trademark registration to attorneys.
- The Trademark Office is NOT your friend.
I remember my favorite intellectual property law professor saying this all the time. He was right. So. Very. Right. However, I would not fully appreciate the truthfulness of his statement until I was out practicing law myself and having to explain why a certain aspect of a mark should receive protection.
While the people who work for the USPTO are delightful people, their job and their place is from a defensive standpoint. A trademark is special and not everyone should receive that special designation. With that perspective in mind, the examining attorneys, the ones who decide if your trademark is similarly confusing to another mark, do just that – they examine. They also question, critique and want you to disclaim certain features of your mark. And, while it might seem unfair to your purposes, they are simply doing their job to keep the marketplace free of similarly confusing marks. They are not your friend, but your hired attorney is looking out for you.
- There Are a Lot of Moving Parts.
Attorneys who want to practice in the area of trademarks spends hours upon hours studying decisions on what makes a strong and registerable mark. It would be so much easier if the USPTO had simply decided only words, not the logo as a whole including colors, fonts and sometimes even smells, could be trademarks. But, the cases did not develop that way.
What can be subject to protection in the mark? Is someone else using that name for a company already? Are they in the same class? Is the name arbitrary, fanciful or merely descriptive? These are all factors attorneys have spent a great deal of time examining, thinking about and drawing conclusions based upon earlier cases and validly registered marks. Those factors are not something your friend Google will just spit out the answer. It requires legal analysis and a thorough understanding of trademark law.
- Could There Be Any More Categories?
It’s like that episode of Friends where Joey decides to put on ALL of Chandler’s clothes and declares, “Could I be wearing any more clothes?” There are over 40,000 classes where a good or service can be registered. Meaning, you must choose wisely. Choosing the wrong category could delay your application or cause unnecessary fees associated with changing categories. An attorney can best analyze your business model and recommend as to which class is best for you.
- It’s a Long Process with Many Deadlines.
Applying for a trademark is not like getting your driver’s license. It is very in-depth and involved. I usually tell people to expect at least 1 ½ years before everything might be final. The USPTO also has very strict deadlines and timeframes set where a response to their inquiries must be received. Outside of attorneys, most people do not live their lives tied to a schedule of drop dead dates with no room for error or mistake. If you are starting a new business you have a lot on your plate already – personnel, properly managing resources and making a profit not to mention family and social obligations. You do not have the time to watch your trademark activity and risk missing a deadline. Hire someone who is obsessed about this area of the law, and you’ll get great results.
- Even the Trademark Office Recommends Hiring an Attorney.
If my other four points do not already have you convinced, then perhaps a word from the entity that will be granting your registration might convince you. The USPTO website has several online resources to give you advice on how to register a trademark, advice as to the process and helpful hints to receive trademark protection. However, even they say, “The trademark registration process is a legal proceeding that may be complex and need you to satisfy many requirements within strict time deadlines (based on Eastern Standard Time); therefore, you should consider hiring an attorney before starting the process.” The link to the page with that quote can be found HERE.
The USPTO has nothing to gain by advising persons to seek an attorney to help with registering their trademark. The office receives no type of kickbacks or bonuses from attorneys because it recommended hiring one. This is the USPTO acknowledging the world of trademark law is complex, and for most, an attorney will save the registrant precious time, resources and overall frustration.
Trademark and copyright law are, to me, legally equal to brain surgery. It is perfectly fine for you to head to your local pharmacy to pick up over-the-counter medicine for your common cold. But, if you needed brain surgery, you would not pick up a knife. I hope you would not. It is the same with intellectual property law. You want someone who has devoted her practice to this area. Money spent on the front-end in this area will save you a great deal of money, time and frustration in the end.
STAY TUNED IN ALERT! I will be the guest on statewide Mississippi Public Broadcasting’s radio this coming up Tuesday, April 7 at 10:00 a.m., CST. You can listen anywhere in the world by going to this LINK. Be sure to Stay Tuned In and catch the radio program on Tuesday!
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Reblogged this on William Tennant LLC.
Super! You really nailed this topic. Clients often visit my firm after DIY. Not having experienced TM legal representation results in strong “Likelihood of Failure.”
Thank you, William! It’s always more expensive to fix a problem than to do it correctly from the onset.
Aaaggghh!!! Where were you a year ago!?!?! Now that I’ve gone through “the process,” I can totally see that I would have been better off with an attorney when I filed for Sunnyhuckle.com. That said, I did search for an attorney but there was no listing or directory of trademark attorneys in the state. I felt like Jon Favreau looking for the secret club in Swingers…it was like a speakeasy…except not so cool. 😛
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