in: Legal
by: Quinn Heraty
We interviewed Quinn Heraty to learn whether it's beneficial to hire a lawyer to file a trademark application, or if the commercials on TV are right, and LegalZoom is the quick and easy answer. Keep in mind...we know the answer, having been through different levels of registering, renewing, and defending different trademarks. And we can tell you - one wrong step - one missed word on an application or old address, can cost you in fees from the USPTO. Here's what Quinn says:
There are two benefits:
- saving time
- saving money.
We usually tell our clients that they should file their own copyright registration application because it is a relatively easy, straightforward, and inexpensive process.
However, trademark registration applications are a very different story because they’re more complex, less straightforward, relatively expensive, and potentially time-consuming.
A trademark registration application has multiple stages:
- (1) the initial application process;
- (2) the examination of the application by an “examining attorney”;
- (3) a possible non-final refusal, which requires a response;
- (4) a possible final refusal, which may include filing an appeal;
- (5) if the application is not refused by the examining attorney, then there will be publication of the mark and an opposition period. The trademark registration application may be stopped (via a refusal or an opposition) at any of these stages.
A knowledgeable trademark attorney will know how to respond to a refusal or an opposition in a timely manner. Even the most astute entrepreneur would not likely be familiar enough with the trademark registration process to efficiently respond to a refusal or an opposition.
Even if the entrepreneur did know how to respond effectively, an entrepreneur’s time (and money!) is better spent on developing her business, rather than dealing with the vagaries of the USPTO and its Trademark Trial and Appeals Board (TTAB) rulings.
A perfect trademark registration application formerly took about 18 months. The USPTO has become more automated and less paper-dependent over the last ten years, so its processing times have become shorter. The speediest trademark registration application we know of took about seven months. The longest took almost three years.
Most trademark registration applications are examined by an examining attorney at the USPTO within 3-4 months of the application filing date. The examining attorney may approve the trademark for official publication. However, more often than not the examining attorney will issue an “office action”, which requires a response. Many times the office actions will include a refusal to register the mark.
In our experience, many unrepresented applicants do not respond to office actions, and their trademark registration applications then become abandoned. Many submit improper specimens, or do not understand the technical meaning of “use in commerce” under trademark law. Some will submit an “intent to use” application when they should have filed a “use in commerce” application, and vice versa. The unrepresented applicant may include overbroad descriptions of the goods and services, which may subject their trademark registration to cancellation after it is registered. Some will apply to register a logo when they meant to register the words, or vice versa. Some will apply for registration of the trademark in a variety of classes, but then be unable to show their use of the trademark in all of those classes, which means that they just flushed a bunch of their hard-earned money down the toilet (a list of classes is here: http://heratylaw.com/trademarks).
When a client comes to us to “fix” a trademark registration application, it usually costs them more – in time and money – than if they had hired a knowledgeable trademark attorney in the first place. They might have filed the trademark registration application themselves, or used an online service like LegalZoom (which is essentially the same thing as filing it themselves). An applicant usually wants to try to fix a filed application rather than start a new application in order to maintain priority over any subsequent trademark applications for the same or similar trademark.
An erroneous trademark registration application cannot always be fixed, and the applicant will have to either start from scratch with a new application (after having lost a year in the trademark registration application process), or, depending on the applicant’s plans for her business, start from scratch with a new brand if someone else applied to register the same or similar trademark after the original applicant did.
