As trademark lawyers, many potential clients come to us asking why they shouldn’t just use a do it yourself web service to apply for trademark registration with the USPTO or even just do the application themselves. Our short answer is that a trademark registration application is a deceptively simple government form. What do we mean by this?
At first glance, a trademark application may seem like filling out a government form – something you can do yourself. But in reality, it involves dozens of legal decisions at every step, which begins even before the application is ever filed. There are a lot of pitfalls that DIY services do not navigate you through. And these issues are often difficult to identify without a deep understanding of trademark law.
Here are our top three reasons why you should file with a trademark lawyer rather than do it yourself or through a “cheap” online service.
A proper search clearance
Trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights. But if there’s any part of your business that requires the assistance of an attorney, it is a trademark clearance search.
Trademark clearance search is a vital pre-filing action that involves a comprehensive search of various databases to check for potential problems with your use of a proposed mark. A trademark attorney can do this for you and provide an in-depth analysis of those search results to advise you of your risks accordingly. This is something online services simply may not provide.
Higher likelihood of success
A recent study by Stanford University found that 82% of trademark applications filed by attorneys are approved for publication, while only 42% of trademarks filed by non-attorneys are registered. In other words, you are substantially more likely to be successful when using an attorney compared to doing it on your own. So, filing it on your own not only has a lower success rate but you also risk losing your trademark filing fee since that is non-refundable. Source: Deborah R. Gerhardt & Jon P. McClanahan, Do Trademark Lawyers Matter? 16 STAN. TECH. L. REV. 583 (2013)
Avoid future legal liability
Filing your trademark yourself or through an online service can cause significant long term damage. The laws governing trademark applications are very specific, but some of the language in the rules is not easily understood by those without training. So even if you successfully obtained a trademark registration from the USPTO, that does not mean that you correctly completed the application. It may even be a future legal liability.
What do we mean by this?
When you complete the trademark application, you sign the application under prosecution of perjury so the sworn statements in your application can be held against you. That’s why an attorney is almost absolutely necessary to ensure that the application is done correctly. Here’s a List of USPTO Fraud Cases.
If you need help registering your trademark, get in touch today. Our team can help ensure your trademark application runs smoothly!