The USPTO provides ample resources to guide first-time DIY-ers through the trademark application and registration process. However, it does not give you much regarding when and how you should decide to seek expert help. Here comes a seasoned IP attorney’s take on “when should you go the DIY route.”
The potential pitfalls for DIY-ing a trademark registration can be divided into two categories: one happens during the prosecution of the TM application, and the other when you end up with a weak trademark.
Delayed and Costly Prosecution
Just to clarify, prosecution here includes every step of getting a trademark registered and, more broadly, maintaining it, including filing an application, responding to office actions, paying maintenance fees, and etc.
First timers make mistakes, and they can be largely avoided if you pay close attention to minor details and smaller fonts. The USPTO’s Trademark Electronic Application System, or TEAS, virtually covers all aspects of a trademark application, meaning you rarely need a supplemental blank page outside the application forms. If you are really careful and read all fine prints, you are pretty safe.
In fact, most common delays happen due to some legal terminology most DIY-ers do not fully comprehend. What is the Date of First Use? What do you mean a trademark is “used”? Legally speaking, a use of trademark is a bit more complicated than it sounds. And unfortunately, the USPTO does a poor job in preventing misunderstanding. These terms can be and need to be looked up by DIY-ers in the USPTO’s help page (which you can access by simply clicking the terms appeared in blue on any TEAS form).
More tough barriers to crack for DIY-ers arises from the technicalities within the trademark law. What is standard character or special form? How are they differently treated when you enforce your trademark right? These questions cannot be answered in a sentence or two.
These concepts when not fully understood may drag you into a costly office-action-and-response loop. Even more worrisome is that most DIY-ers after getting an office action from the USPTO simply give up DIY and seek an expert help from there. When this happens, you will simply spend way more money than just hiring an expert from the beginning.
When many business owners come up with a great name for a product or service, it is usually very catchy and easy to memorize. The thing is they are catchy and easy to memorize often because they are describing a certain aspect of the product or a light tweak on an existing term or expression. What is wrong with that?
Well, the trademark law provides a varying degree of protection to trademarks depending on how they are fanciful, arbitrary, suggestive, or descriptive. For example, Google for an IT company is more distinctive and unique than Microsoft. Microsoft is suggestive and descriptive while Google is fanciful and arbitrary. Can you guess what is better protected? The answer is Google, of course.
What do you mean better protected then? If you start providing an educational service and call it Google Tutoring, it might confuse consumers as to it origin. The same is not exactly true when you have a cleaning product made of microfiber, named Microsoft Towel.
Coming up with a wrong name can be very costly if you only find out after investing a lot in promotion, advertising, and generating good will. However, any seasoned IP attorney can correct your path into a right direction.
So, when should I seek a counsel?
First, to prevent a weak mark, you should first search the internet. If you find anything that is similar to your mark, you’re pretty safe. I said, similar not “identical”. Yes, sometimes a space or a variation of a single letter can give arise to a significant difference. However, you should always watch out for consumer confusion when it comes to trademark. Remember, most consumers give a cursory look at your trademark at most. If you see something that is somewhat similar to your product and might cause some consumers wonder, then you should seek an expert advice.
The first tip also helps avoiding delays in prosecution, and it is a general one. So, it might not be so helpful. Here goes situations that call for an expert help.
Standard character marks
Standard character marks are more easily put brand names. You can register anything that can be spelled out in letters and symbols commonly used in the U.S. This kind of trademarks are not confined within specific styles, fonts, colors, or design, so more often it provides a broader protection of the law.
Applying for a standard character mark as long as it is possible is a pretty standard advice. However, knowing if it is feasible can be a little tricky. On the other hand, special form marks are more frequently registered without an office action (or any procedural delay).
Control over trademark
If you’re a sole proprietor, there is little ownership issue. However, trademark ownership requires a little bit more than just a name plate. The owner must have sufficient control over the products or services offered in association with the trademark. So, if you have partners, affiliated companies, co-owners, and so on, you might want to seek a professional help.
A wide range of products or services offered
Trademark is registered and protected under certain categories, or more properly international classes. First, you should do some research on USPTO’s trademark ID manual. Just search the items that you are offering or plan to offer. If you find your items in multiple international classes (the first three-digit numbers of the “Term ID”), it is recommended you consult an attorney first. Trademark application and maintenance fees are calculated per international class. USPTO TEAS plus application fee is currently $250, but if you have four international classes, the government fee alone becomes $1,000. In the same manner, your savings from expert help will be multiplied.
If your trademark has a special meaning such as a name of a person or of a geographical area, a word derived from a foreign language, a term of art, you need to seek help or should look up the USPTO’s Trademark Manual of Examining Procedure (TMEP) to see if you need to submit supplemental statements.
The above is by no means an exhaustive list of things you should watch out. In fact, you would never know what someone else can say about your trademark unless you ask. However, if your trademark falls in the above category, I would say that you will save more money if you don’t DIY.
For all others, if you have time and resource to carefully DIY, you should DIY. In so doing, you will learn about the trademark in general and benefit from your knowledge and understanding of the trademark law.