Can You DIY Your Trademark?
Sometimes people ask me if they can file their own trademarks. It's certainly possible to file a trademark application yourself. Legally, you don't need an attorney to do it. But there are a few reasons why you want an attorney to handle it.
The bottom line: The trademark application is notoriously difficult and we rarely see successful DIY applications. The trademark office can deny your application for 100 different reasons, like using commas instead of semicolons...seriously! So it’s a better use of your time + money to work with an attorney who already knows how to create and file successful applications. You’re more likely to be approved that way.
Reason #1: A Good Trademark Search Requires Analyzing the Law
You'll need to start by completing a trademark search to determine if your trademark is available. Otherwise, you're just wasting the application fee. These searches are complex. It's not as simple as inputting your exact company name and hitting search. You'll need to search for similar sounding words, similar spelled words, alternate pronunciation of words, complex words, foreign translations, and words found in the supplemental register. Once you get all the necessary search results, you'll need to analyze current trademark law and policies to determine if the results will hold up your application. It's probably best to call in an expert to run the uspto search. It needs to be done correctly to make sure that your brand is available before you begin a trademark application.
Reason #2: The Trademark Application is Complicated
When you file a trademark application, you're actually starting a legal proceeding with the federal government. The USPTO Trademark Examiners are all attorneys who review your application to determine whether it meets legal standards. There are a lot of trademark laws and policies that you'll need to understand:
Whether you can file the TEAS, TEAS Plus, or Regular Application
Who should own the trademark: you or your company?
Do you need a word or design trademark?
Do your products quality for a 1a or 1b filing basis?
Do you need a color or black/white mark?
What evidence of your mark will meet USPTO standards?
What categories should you file for?
What products/services should you list?
How do the products/services need to be described to meet USPTO standards?
Do you need a foreign translation?
Do you need a likeness waiver?
What does the legal descriptions of your mark need to say?
Reason #3: You’ll Have to Work with Trademark Office Attorneys
After you complete the application, it will be assigned to a Trademark Examiner Attorney for review. They will complete a trademark search to identify potential conflicts with current trademarks. If they find a problem with your application or search results, they will send you an Office Action. An Office Action is a legal proceeding where a Trademark Examining attorney is telling you that your current trademark application cannot be granted based on the law.
That's why it's so important to have an expert in your corner. You only have six months to a.) convince the trademark attorney that the law allows your application or b.) amend your application in a way that agrees with the law. The best person to do that is another attorney who has a firm grasp of trademark law.
Thinking you won't get an Office Action? They happen to 84% of trademark applications.
Reason #4: An Expert Can Save You Time + Money
Another big reason to hire an expert is that doing a trademark yourself takes a lot of time. The average time for a trademark approval is 10 months. But it can take a lot longer when you add up months of frustration trying to teach yourself trademark law and policy instead of running your company. If you mess up the application, you may not be able to fix it. If you can fix it, because the trademark application process is so long, it can delay you months. Also, the trademark office does not issue refunds so you want to be sure that your application is correct before you file it.
Reason #5: You Need Your Trademark ASAP
Another reason to hire an attorney is that you can file your application sooner. You don't need to waste time learning all about trademark law yourself or dealing with delays caused by mistakes. Time is a big factor because there are a finite number of trademarks available. If there is a similar trademark in a similar category, then you cannot use that name. That means a lot of company names are already taken. As the number of entrepreneurs grows, so does the number of trademark applications. Trademark applications are up 10% this year and there are currently 800,000 waiting to be reviewed. So, if you find a great name, you need to file your trademark application asap.
If you're thinking about doing your trademark yourself, it can be done. But consider that your time may be better spent on your areas of expertise, like running your company, instead of learning how to analyze a large, complicated area of law.
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