When it comes to do-it-yourself trademark websites, LegalZoom and Trademarkia are two of the most popular ones, thanks in large part to aggressive marketing and a focus on upselling and volume. For those of you who aren’t familiar with these websites, LegalZoom is a legal document filing service, while Trademarkia is essentially a trademark search engine.
Despite the legal focus of these websites, both LegalZoom and Trademarkia are unable to dispense legal advice. They even offer a number of disclaimers that prominently emphasize this fact:
“LegalZoom is not a law firm, and the employees of LegalZoom are not acting as your attorney. LegalZoom’s legal document service is not a substitute for the advice of an attorney.”
“LegalZoom cannot provide legal advice and can only provide self-help services at your specific direction.”
“LegalZoom is not permitted to engage in the practice of law. LegalZoom is prohibited from providing any kind of advice, explanation, opinion, or recommendation to a consumer about possible legal rights, remedies, defenses, options, selection of forms or strategies.”
“Trademarkia is a US corporation that develops Internet and software technology to aid the public in search of government records.”
“Trademarkia is not a lawyer, law firm, legal services provider, or a legal service, is not acting as your attorney, and is not a substitute for an attorney or law firm. The information provided in this site is not legal advice.”
“Trademarkia, Inc. cannot provide you with ANY legal advice. You are encouraged to consult with an attorney in your local geography for legal advice.”
And yet, despite all of these disclaimers, both of these websites still give the overall impression that they provide do-it-yourselfers with valuable legal guidance. Although LegalZoom and Trademarkia do offer some sort of fee-based attorney services (either through a classic upsell or via referral), the level of actual attorney involvement and individualized attention isn’t particularly clear. Even worse, it’s often not clear what the additional fees for these attorney services will be.
Don’t Confuse Low Cost with Good Value
As a trademark attorney who has conducted hundreds of trademark searches and has prepared thousands of trademark applications, I’m not a fan of do-it-yourself trademark websites like LegalZoom and Trademarkia. One of my biggest concerns is that LegalZoom and Trademarkia both promote low cost rather than high value. I feel this does a tremendous disservice to potential trademark applicants. After all, is your goal merely to acquire a federal trademark registration? If so, it may be possible to achieve that with LegalZoom and Trademarkia. But, if your goal is to ensure that your most valuable business assets (your trademarks) are protected from the time you come up with that great name or logo all the way through the life of your business, then there’s no better way I know of than by developing a relationship with a trusted and experienced trademark attorney.
In addition to LegalZoom and Trademarkia luring visitors with the promise of low cost, they also use their one-size-fits-all approach to lead people into believing that the federal trademark registration process is easy and straightforward. You just perform a quick search, fill out a simple form or two and bingo…you have a registered trademark. Trust me, if it was that easy, there would be no such profession as a “trademark attorney.” All of the attorneys and law firms you see advertising their trademark services on the Internet would be drafting wills, filing divorce petitions, or defending insurance companies. The fact of the matter is that a large percentage of trademark applications are initially rejected by the United States Patent and Trademark Office (USPTO), and many of them were filed by individuals with either no legal representation or insufficient legal representation.
Did You Know a Trademark Application is a Legal Document?
Many trademark applicants don’t realize that a trademark application is a legal document that will be rigorously examined by a USPTO attorney who, in many cases, will have follow-up questions and requests for additional information. Without the advice and guidance of a trademark attorney, it will be entirely up to you to properly respond to these inquiries and to know when your responses are due.
Let me repeat that. If you don’t have true legal representation, you will be the one in direct communication with the federal government regarding your trademark. It will be the accuracy and completeness of your responses that will determine whether or not your trademark application is eventually approved or refused. Plus, if you can’t figure out how to salvage your application after receiving a preliminary rejection, you risk losing months of time and hundreds of dollars. To be frank, you may have to start the process all over again. And, as you may already know, the USPTO government filing fees are non-refundable (not to mention the fees you may have paid to LegalZoom and Trademarkia).
Low Cost Can Become Quite Costly Indeed
For the sake of argument, let’s say you make it through the trademark registration process on your own and you are now the proud owner of a Certificate of Registration. No more worries, right? Actually, a host of worries and surprises may be waiting for you…months or even years down the road. Unfortunately, if you use a cut-rate website – like LegalZoom and Trademarkia – rather than developing a relationship with a skilled trademark attorney, you’ll be caught flat-footed if your trademark rights are challenged. Despite what you may think, the USPTO doesn’t enforce trademark rights or combat infringement. Those responsibilities are yours, and having a preexisting relationship with a trademark lawyer who understands your business and is familiar with your trademarks can make things a whole lot easier.
Now let’s look at three examples of how easily-avoidable mistakes by do-it-yourselfers brought about some costly consequences…
Case Study 1 – Incorrect Ownership
Michael is the CEO of Pegasus Technologies, Inc. Michael created a marketing slogan for his company and sought trademark protection for it. Michael didn’t consult a trademark attorney, opting instead to register his slogan through a do-it-yourself website. Fortunately for Michael, the USPTO approved his application and his trademark issued to registration.
Over the next several years, Pegasus Technologies, Inc. used the trademark extensively in commerce. One day, Pegasus Technologies’ right to the trademark registration was challenged by another company. Pegasus Technologies fought the legal challenge, but ultimately the trademark registration was canceled. Why? Because when Michael prepared the original trademark application, he listed himself as the owner of the trademark rather than Pegasus Technologies, Inc. Clearly, Michael was never the owner of the trademark. He was only the CEO of Pegasus Technologies, Inc. The true owner was always Pegasus Technologies, Inc.
When an application is filed in the name of the wrong party, the mistake cannot be cured by simply amending the application or assigning it to the proper party. The application is void and any resulting registration has no legal effect. It’s too bad Michael had to learn the hard way.
Case Study 2 – Insufficient Search
Shannon decided to start a business selling products under the name STRONGHOLD SNAPS. She hired a graphic artist to design a logo for her new business that would prominently include the STRONGHOLD SNAPS name. The logo was expensive, but Shannon was very pleased with it. Once the logo was complete, Shannon used a do-it-yourself (non-attorney) website to perform a standard trademark search to see if there were any trademarks that were similar to the one she planned to register. After not finding anything that she thought was in conflict with her new logo, Shannon prepared and submitted her trademark application.
About four months later, Shannon received a trademark office action from the USPTO. The examining attorney refused registration of Shannon’s logo on the basis that it was likely to cause confusion with an existing registration owned by another company for the name STRONGHOLD FASTENERS. Because the products Shannon produced were quite closely related to the products produced by this other company, Shannon was facing an uphill battle.
Not having any legal experience, Shannon wasn’t sure how to appropriately respond to the USPTO…but she did her best. Unfortunately, Shannon’s best was not good enough. The examining attorney maintained his rejection and Shannon’s application went abandoned. Shannon wasted so much time and money having a logo designed around a name that was problematic to say the least, not to mention filing a trademark application that was destined to be rejected. Without question, a comprehensive federal trademark search would have prevented all of this from happening in the first place.
Case Study 3 – Errors on the Application
James wanted to obtain federal trademark protection for the brand name of his company’s products. He had used the name locally for years but recently began selling his products nationwide via his new website. To protect the brand name on a national level, James wisely sought to register it with the USPTO. But, James had just spent a fortune redesigning his website for a national audience. So, he figured he would try to save some money by using a DIY trademark website instead of working with a trademark attorney.
As fate would have it, James unknowingly made a mistake while completing the trademark application. The brand name he listed on the application was hyphenated, whereas the name shown on the product packaging sample he submitted with his application was not. Also, the brand name shown on the application was in quotation marks, whereas the product packaging displayed the trademark without quotation marks. Several months after submitting his application, James received an office action from the USPTO. The examining attorney preliminarily refused registration of James’ mark because of the relatively minor differences between the trademark shown in the application and the trademark printed on the product packaging.
Even though the issue was correctable, James felt somewhat intimidated about dealing directly with the USPTO. He was now concerned that he might make a further mistake when responding to the USPTO and he didn’t want to risk his application going abandoned. At this point, James sought the advice of a trademark attorney. After consulting with James, the attorney was able to successfully amend the application and James was awarded a federal registration for his trademark a few months later. But, the added expense of hiring a trademark lawyer eroded the original “do-it-yourself” savings James was counting on. In hindsight, James would have been better off – in both time and money – by hiring the trademark attorney to prepare and file his application from the very start.
A List of Procedures Isn’t the Same as True Legal Advice
Despite all the clever marketing tactics to make you think otherwise, cookie-cutter trademark services such as LegalZoom and Trademarkia only offer a general, one-size-fits-all approach. Sure, these sites offer procedures and steps…but this is not the same as true legal advice and guidance. Thus, these sites cannot ensure your trademark search is performed correctly or that your trademark application is completed accurately. Without legal assistance tailored to your unique situation, you could very easily make a costly mistake.
In fact, just one error on the trademark application can lead to the denial of your application, limitations on the scope of your trademark protection, or even the cancellation of any resulting trademark registration. I’ll say it again – only by hiring a skilled and experienced trademark attorney will you receive the personalized guidance and legal advice you’ll need to successfully navigate the complexities and potential pitfalls of the US trademark registration process and ongoing trademark enforcement.
Personalized Service (Trademark Attorney) vs. One-Size-Fits-All (LegalZoom and Trademarkia)
It’s no secret that personalized and professional legal services from a trademark attorney will be higher priced than a non-attorney option. Hence, it can be rather tempting to use a do-it-yourself trademark service in order to save a few hundred dollars. But in the long run, a DIY approach using a one-size-fits-all website can actually cost you a lot more – in the form of money, risk, effort, time, and aggravation.
I’m US trademark attorney Morris Turek and I’ve been working with people just like you since 2005. Whether you are looking to perform a trademark search, register a trademark, pursue a trademark infringement, or defend a challenge to your trademark rights, I can help you in a prompt, efficient, and affordable manner. Maybe you’ve even tried the do-it-yourself route and now need help responding to a trademark office action or a cease-and-desist letter. If so, please don’t hesitate to contact me. Unlike the one-size-fits-all websites, I offer personalized service and take pride in developing the best solution for your specific trademark matter.
Regardless of where you are in the trademark process, feel free to give me a call at (314) 749-4059 or shoot an email to firstname.lastname@example.org. Professional legal help…real legal help…is just a phone call away. I look forward to hearing from you.
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