Registering a Trademark Yourself
Lawyers are a drag. They can be condescending, unresponsive and in general a hassle to deal with. Above all, they’re expensive. It’s no wonder then that, when it comes to something as seemingly straightforward as registering their trademark, many start-ups and small businesses choose to go it alone. This option has become more attractive than ever thanks to online services like LegalZoom, which will help fill out forms and provide additional guidance. You can’t file someone else’s trademark application for them (you need to be a lawyer to do that), but you’re allowed to file your own. Like people who represent themselves in court, applicants who represent themselves before the U.S. Patent and Trademark Office (USPTO) are referred to as “pro se.” Currently, around 30% of trademark applicants are pro se. Even without using legal assistance software like LegalZoom, the basics of filing a trademark application aren’t too difficult to figure out if you’re willing to put in the time to do so. Applications can be filed online through the USPTO’s Trademark Electronic Application System (TEAS), available at teas.uspto.gov. The main things you’ll need to prepare are an acceptable description of the goods or services in connection with which you intend to use the mark, an image of the mark if it incorporates design elements, and a specimen and date of first use if the application is made on an in-use basis.
However, there is a reason that 70% of trademark applicants still use an attorney. Frankly, a lot pro se applicants screw it up. A 2013 study found that 40% of DIY trademark applications die before reaching publication. In contrast, attorney-filed applications have an 82% success rate. This shouldn’t be too surprising. While trademark applications may appear superficially simple, complex legal issues can arise during prosecution that require specialized expertise to understand and resolve. There are a number of common mistakes that pro se applicants make. The first mistake can be to file a trademark application in the first place. Trademark applications are routinely rejected because the mark presents a likelihood of confusion with a prior registration or application, because the mark is descriptive of the goods or services, or because it just simply isn’t being used as a trademark. Unfortunately, common sense isn't a useful guide to issues like likelihood of confusion and descriptiveness. These are legal standards that entail complex legal analysis. An experienced trademark attorney can advise you of these risks before you file. Many pro se applicants are also tripped up by crafting the identification of their goods and services, which must be described in standard and sufficiently definite commercial terms that will be recognized by the USPTO. The goods or services must also be properly categorized within the international Nice Classification System, a procedure that is far from intuitive. If the identification or classification is unacceptable, the USPTO will issue an Office Action, which is often worded in language that pro se applicants find perplexing. If they do not properly respond, the application will be deemed abandoned. Another difficult aspect of USPTO trademark applications is the specimen of use. Pro se applicants often simply submit another drawing of the mark, a business card or other unacceptable materials. This will also trigger an Office Action, and, once made, this mistake can sometimes be complicated to correct.
Even if a trademark applicant manages to avoid abandonment and obtain a registration, mistakes made in the application process can surface years later when it becomes necessary to enforce the registration. For example, it is not uncommon for pro se applicants to submit an identification of their goods or services that is either unnecessarily narrow or else fraudulently broad. Similarly, many applicants will choose a representation of their mark that is unnecessarily narrow or fails to accurately reflect the way that consumers encounter their brand. Trademark owners also fail to appreciate the implications of the various options that the USPTO makes available when a mark or an element of a mark is deemed descriptive, such as a disclaimer or amendment to the supplemental register. All these factors can affect the scope of a trademark registration and make it a less effective tool in the event that the trademark is infringed. Therefore, while it is allowable and perfectly possible to prepare your own trademark application, it is worth proceeding cautiously and making sure you understand the consequences of the legal documents that you file with the USPTO. Knowmad Law’s fixed-fee trademark application packages start at $675 and include a complimentary search report and analysis of your mark’s chances of successful registration. Learn more about trademarks on our FAQ page or schedule a trademark consultation or request an engagement letter to get started on your trademark application right away.