Updated: Jul 15
A trademark can be any word, phrase, symbol, design or combination of these that a business uses to define and set its goods and services apart from those of competitors. Trademarks can be registered with either a state or with the United States Patent and Trademark Office (as well as internationally). Trademarks are an important asset of a business and are synonymous with the concept of a company's "Brand." Some studies have concluded that trademarks can represent 80% of the value of a successful company. As a result, it is no wonder that the number of trademark filings in the US has skyrocketed in the past few years (according to the USPTO).
For those that are contemplating taking steps to register and protect their brand/trademark, the natural question is "How do I file a trademark?" The USPTO has evolved over the years, and now most filings are prepared and submitted online via their web portal. It is even possible for a non-lawyer to get an account and fill out and file their own trademark applications. This has led to a trend of "do-it-yourself" enthusiasts who have flocked to the USPTO to try and register their brand or business. Given that the filing fees of the USPTO are quite expensive, and the fact that trademark attorneys can charge up to several thousand dollars to prepare, file and prosecute a trademark - it is no wonder that many people have taken the position "why do I need a lawyer...can't I just file my own trademark to save money?" This article is going to address this second question. Let me be clear at the outset - you most definitely can do it yourself without a lawyer. And if you like to gamble with your valuable business assets and don't care if you mess up your most important business asset - go ahead and do it yourself! But if you want to minimize the risk of being rejected, common sense (and the cold-hard statistics of real life) would urge you to get a lawyer.
What do the Statistics Say?
Per USPTO statistics, as many as 60% of do-it-yourself applicants that proceed pro se (ie. without a lawyer) get rejected each year. That means your odds of success drop to less than 50-50 if you decide to try and file yourself (without a lawyer). How many business owners would consider it wise to take such an important decision on the future of their business that has "worse than 50-50 odds" of being helpful? (especially given that a negative result may harm the business)
Additionally, of those successful applications, only 43% of them proceed smoothly, without receiving any "office actions" objecting to the application or seeking additional work to keep the application alive. An "office action" is an official letter of rejection of the application to register a trademark, issued by an examiner at the USPTO. Once an "office action" is sent out, you only get a specific time to try and take steps to convince the examiner to withdraw the rejection and allow your application to continue. Suffice it to say that an "office action" is usually where any mistakes or deficiencies with your application need to be ironed out with legal arguments. As earlier stated, you don't get a long time to "fix" things - you must respond to an "office action" within 3 months, or your application is considered "abandoned." (there is the possibility of ONE 3-month extension) The sound and logical decision would be to hire an attorney at this stage - but can you afford the risk of NOT finding one in time, or being forced to pay premium hourly rates? Well, this can be avoided by having an attorney file your application. Attorneys typically offer flat fee packages to deal with the filing, and non-substantive "office actions." Some, like our office, provide flat fees and reduced rate options for substantive "office actions." It goes without saying, if an attorney prepares and files your application, the odds are dramatically increased that it will be successful, and the odds of being subjected to an "office action" are decreased, while the odds of prevailing an "office action" are increased. In short, you significantly decrease the headaches and increase the chance that your application will be successful, simply by hiring an attorney to do it.
What about Online Websites that will file your Trademark for a couple hundred bucks?
Indeed, multiple online services are out there that advertise the ability to have a trained non-lawyer specialist file your application. Some even offer that the process is under the supervision of a lawyer, or even looked over by a lawyer. Typically these will charge anywhere from $200- $600 (plus filing fees) to file your application. To the uninformed, these may seem like "cheaper" options. However, if you use one of these services, you should keep in mind that more often than not your application is being prepared by a non-lawyer. That means that ALL they can do for you is file the application, then you are on your own. If and when an "office action" comes back for your application, the service will tell you - "Sorry, we can't help you with that!" In fact, they are forbidden by law from assisting you with "office actions" - because to do so would be the "unauthorized practice of law." Only a lawyer can provide legal advice and represent you before the USPTO. So again, what little you think you "save" by going to a cheap online option, ends up costing you more and potentially hurting you.
I recently had a prospective client call about an office action that their not-for-profit had received one month ago. (1/3 of their response time was already lost) It was a non-substantive "office action" and they had used one of the "cheap" online sites (a well-known one for trademarks) to file, and now, one year later they didn't know what to do and were at risk of losing their main branding trademark for the work of their not-for-profit. The irony was that the "cheaper" option was not much cheaper than an attorney. In fact, for a couple of dollars more - they could have gotten one of my firm's flat fee trademark registration combo packages, which included responses to non-substantive "office actions" at a reduced hourly fee. A little more than that, and they could have signed up for my firm's combo package, where non-substantive "office actions" are handled at no additional fee. (that is not unique to me, many trademark attorneys offer flat fee trademark registration packages that will anticipate the need to respond to "office actions") So now they are faced with the prospect of paying for 2 months of work to keep their application alive. Based on the several attorneys they had tried to contact, in the end, it will end up costing more than if they had gone with a lawyer instead of the "cheaper" online alternative. (not to mention the stress and aggravation)
While you ponder that fact and take it in, notice how I said "one year later" they were faced with an "office action." Indeed, applications are now taking on average about 12-13 months to reach the stage when they are getting a final determination. That is one full year, during which they could have had an attorney to consult with (again - flat fee options may entail consultations at no cost) - for LESS than what it was going to cost them to "go with the cheap option" and now scramble to find a lawyer to respond to the "office action."
So the smart choice is to get an attorney at the beginning of the process.