I’m a big believer in DIY-ing things in your business. I do it all the time and I’m sure you do too.
And even though it’s not in my best interest, I often encourage clients to DIY legal projects.
And that’s because there are lots of legal projects that DIY-ing or using a service like LegalZoom is the smartest choice. But when it comes to trademarks, it is a terrible idea.
So every time I get asked the question,
“Can I do my trademark myself or do I have to hire a lawyer?
My quick answer is hiring a lawyer is a smart choice and investment in your business.
The longer answer involves why it’s a terrible idea.
Why investing in hiring a trademark lawyer is a smart investment
When you hire an experienced trademark attorney, she is going to:
- make sure you don’t waste money filing for a trademark you’ll never get
- increase your chance of getting your trademark
- increase the value of your trademark
How an attorney can stop you from wasting money
There are several reasons that submitting an application is a waste of money.
What you want to register as a trademark might:
- not meet the trademark requirements
- not being used as a trademark
- be too similar to an existing registered trademark
And if you reach out to an attorney, she’ll be able to tell you these things.
And you won’t have your hopes dashed months later when the USPTO sends you an Office Action (more on that below.)
How an attorney can increase your chances of getting your trademark
After your attorney gives you the first benefit of saving you money. The next benefit she offers kicks in.
Because an experienced trademark attorney is 50% more likely to get your trademark registered.
An experienced trademark attorney knows:
- what the USPTO is looking for
- how to write your application
- what to submit as proof
- how to overcome any objections to your application
And because of that, you are more likely to get your trademark.
How an attorney increases the value of your trademark
It might sound funny, but there’s an art to a trademark application. And understanding this art can drastically increase the value of your trademark.
An experienced trademark attorney knows how to get you a flexible trademark.
Your trademark only protects the exact products or services listed on your application.
Attorneys know this. And so they try to get you an application that will cover products or services you are likely to add.
This means you have the option of adding related products or services without filing a new application.
For example, Molly the Maker wants to register her trademark in her brand name, Lark Paper Co.
At the time of preparing her application, Molly only sells:
- holiday cards
- birthday cards
- blank cards
- art prints
But in the next few years, she hopes to also sell:
- stationery sets
So when Molly completes her application, she selects from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual):
- Holiday cards
- Occasion cards
- Blank cards
- Art prints
But if Molly had gone to an attorney, the attorney might instead have selected:
- Paper stationery
- Art Prints
The attorney’s trademark will protect Molly for any paper stationery. While Molly’s trademark only covered the exact products she is currently offering.
Because of this, Molly can expand her line without filing for a new trademark. And if she plans on selling her business, the broader trademark makes it more appealing to buyers.
Sure with research, you might be able to get a trademark that’s exactly the same as the one that’s filed by an experienced attorney. But wouldn’t you rather spend your time doing something else?
How much should be in your trademark savings account
If you are working towards filing for a trademark, then you need to start a trademark savings account.
Your goal will be to save $2,500. This should cover:
- cost of hiring an attorney
- USPTO filing fees
- trademark search fees
Once your savings account hits $2,500 you can start the process of finding an attorney.
5 trademark registration steps
Once you’ve got your savings account, you’ll start the process of getting your trademark.
Sadly, this process isn’t quick. Even when things go perfectly, it takes almost a year from the time you file your application with the U.S. Patent and Trademark Office (USPTO) until you get your registration.
So what are the trademark registration steps? And where might you get off track?
Trademark Registration Step 1: Search for similar trademarks
The first step you must go through is to search to make sure there aren’t any similar trademarks out there.
Trademarks are all about consumer protection. They are designed to make sure that consumers aren’t confused about who is providing them the product or service.
So you’ll need to search both the web and the USPTO database. (Here are detailed instructions on how to do a detailed trademark search.)
Get a Trademark Search Checklist
Want a checklist to help you do your trademark search? Hit a roadblock completing your search?
Then join us in the artist’s Courtyard and not only get a Google Docs trademark search checklist but get access to a private 24/7 community of creatives and a library of 20+ checklists, templates, and quick videos helping you run your creative business professionally + legally.
When you do this search you aren’t looking for exact matches.
You have to cast a wider net because things that look or sound similar can confuse consumers. This means I couldn’t go out and register Macdonald’s because it’s too much like McDonald’s.
It’s in your best interest to conduct a thorough search. This is because if the USPTO finds something they could deny your registration. And then you’ll lose all the money that you spent on your application.
If you don’t find any similar trademarks, then you are free to move on to Step 2.
And if you do find a similar trademark, you might want to start thinking about a brand so you don’t get a cease and desist letter.
(As a bonus, if you love research, then this is the one step I endorse DIY-ing!)
Trademark Registration Step 2: Prepare and file your application with the USPTO
Trademarks are registered country by country. In the United States, the USPTO oversees trademark registrations.
So in this Step, you’ll prepare and file your trademark with the USPTO.
You’ll also be providing the USPTO with proof of how you are currently using your trademark. This proof is called a specimen. Specimens are used by the USPTO to verify that consumers will associate your business as the provider of the product or service.
Once you’ve filed your trademark the waiting game of Step 3 begins.
Trademark Registration Step 3: Review your application by the USPTO
About three months after you submit your application, you’ll be given an attorney at the USPTO. This attorney will review your application.
At the end of his review, he will do one of two things:
- ask questions and request clarifications about your application (called an Office Action)
- give you the thumbs up to move to Step 4
Office Actions are most commonly issued because he thinks your trademark is:
- describing your product or service
- too similar to another trademark registered with the USPTO
- descriptive of a geographic location
- your name or sounds like a name
- not functioning as a trademark
If he sends you an Office Action, you’ll have six months to respond to all his questions and concerns.
If you fail to respond within the six-month window, your application will automatically expire. This means you’ll have to start back at Step 1 if you still want your trademark.
If you respond, he’ll have a couple of months to review your response. After this review, he will either allow you to move to Step 4 or repeat the process with more questions.
A recent study showed that 65% of USPTO applications receive an Office Action.
So this back and forth dance with the USPTO attorney will happen with most applications. And while some Office Actions are easy to correct, others are more challenging. (Another reason why it’s good to check in with an expert before you submit your application.)
If you get approval from your USPTO attorney, then you get to move on to Step 4.
Trademark Registration Step 4: Review your trademark by the public
Step 4 starts with your USPTO attorney giving you a publication date. This is the date that your trademark will be published in the Official Gazette.
For 30 days after this date, anyone that thinks your trademark would impact his/her trademark can oppose your registration.
If no one comes forward within this window, then you’ll automatically move on to Step 5.
Trademark Registration Step 5: You’ve got a registered trademark!
If no one comes forward in Step 4, you’ll automatically get your trademark.
And about three months later, you’ll get your trademark registration certificate in the mail.
Once you have a registered trademark, you can use the ® symbol after your trademark. You’ll also need to renew your trademark and stop anyone from using a similar trademark.
And that’s it! You now know the five trademark registration steps.
While this process isn’t difficult, there are several places where things can get off track. And that’s why it’s often nice for you to have someone holding your hand as you navigate the process.
Got questions about this post?
Hi! I’m Kiff! I’m your friendly legal eagle (and licensed attorney).
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