Do You Really Need a Lawyer to Register Your Trademark?

If you're dreaming up a new product or service for your business (or thinking about the next evolution of your brand), there is one crucial step you don't want to miss that can make the difference between a product that stands out and one that fades into all the online noise. Choosing the name of your next product should be a strategic choice informed by data - data you can get with a trademark search. Tune in for a few tips on choosing a name strategical, and how a trademark search can give you the information you need to make sure your brand stands out.

If you're ready to protect your trademark (whether you're using it or not!), head on over to artfulcontracts.com/trademarks to learn more about my done-for-you trademark registration service.

Key Takeaways

• Your chances of a successful trademark registration increase by 40% when you work with a trademark attorney
• The trademark process is long and complicated and there are multiple places where strategy is key to ensuring your best chance at successful registration
• There are lots of trademark scams! Be on the lookout for letters and calls saying you owe additional filing fees - most of them are not real

Resources Mentioned

• Access the trademark video guide to learn more about trademarks and get started on the trademark registration process
• The USPTO's scam alert & help phone number
• Watch the free masterclass
• Follow Amy on Instagram @artfulcontracts

Next Steps

Thank you so much for listening! If you enjoyed this episode, please reach out and let me know by sending me a DM on Instagram @artfulcontracts

Here are a few other steps you can take to support the podcast:

• Leave a review on Apple Podcasts
• Subscribe on Apple Podcasts, Google Podcasts, Spotify, or Stitcher
• Share the episode on social media and tag me @artfulcontracts

Episode Transcript

There are certain pieces of the legal stuff, the legal parts of your business that you can do yourself. That's kind of the basis of my whole business, right? It's helping you figure out how to execute the parts of the legal requirements for your business that you can do on your own. But there are some pieces that you should not or cannot do on your own. So, yes, there's a lot of things you can form, you can, you know, file your LLC documents on your own. You don't need somebody else to do that for you. But there are other things that you definitely do need help with.

So today I want to talk about filing a trademark and whether you need a lawyer for that process or not, and what my my thoughts on that. I have kind of a lot to say on this, so I'm going to try to keep it short and sweet, but we'll see what happens.

Hey, I'm Amy Nesheim, licensed attorney for online business owners and founder of my own business, Artful Contracts. You're listening to Legal Made Easy, the show that makes the legal aspects of online business easy to understand and implement so you can grow your business with confidence knowing you've got it all covered. Let's dive in. Alright, do you need a lawyer to file a trademark registration with the US Patent and Trademark Office? Short answer, no, it is perfectly legal for you to fill out your own trademark application and do it on your own. However, I don't recommend it. The trademark registration process is one of those things that I do recommend having a specific lawyer go through the entire process with you and do it for you.

Now, like with most aspects of the legal stuff, you kind of have three tiers, three options that you could use for getting this done. So the first one is doing it all on your own. It's perfectly legal to file your own trademark application for your own business. You cannot do it for somebody else. Someone who's not a licensed attorney cannot do it for somebody else.

The second option is kind of that middle tier where there are services where they basically guide you through the process of filling out the form and help you submit it. Or kind of similar, there's things like Legal Zoom where they they have a process where you submit information, but there are attorneys who fill out the application and do you know the search for you, but it is not super one-on-one, it's not super customized, they do a million of them, so it is a very quick and kind of hands-off, not personalized process. So that's kind of the middle tier.

And then you have actually working with an attorney who you know is a high-touch, full service kind of offer where they walk you through every piece of it. For some things, doing it yourself or using one of those services that walks you through like filling out the forms is fine. For an LLC, that's fine for most people, especially if you're a sole proprietor.

For trademarks, I recommend doing that third-tier option. You're going to have a lot better experience. And trademarks are complicated, they don't always succeed. In fact, you are much more likely to have a successful application, a successful registration if you go through an attorney who actually takes the time to get to know you, your business, your goals, how you actually use your trademark, and then puts the effort in to make sure your application reflects that. And that's just statistically true. You're more likely to succeed, but like 40% more likely to actually get registered if you use an attorney instead of doing it on your own. And I have a couple reasons why I have this opinion, why I think you should use a lawyer to register a trademark. So let's go through them.

The first reason, and the one that I think is one of the most important, is the strategy that goes into registering a trademark. There are a lot of places where decisions have to be made throughout the trademark process, and having someone who has the knowledge to be able to make a strategic choice, but also has taken the time to get to know your business, so it's a good strategy for you. I can't even say how valuable that is. So, as one example, one place where strategy comes up is in your trademark search. So the first step of registering a trademark should be to run a trademark search to just see if the name is available. So when you run that search, you're looking for anything that is similar, not just identical. So if you order a trademark search through a service or sometimes even through one of those trademark mills with attorneys who actually do it.

When I say trademark mill, I just mean a law firm where all they do is file hundreds of trademark applications a month. A lot of times what you're gonna get back is just a list of trademarks that are registered that are similar to yours. And it's not gonna come with any analysis. You're just gonna get a list, and then you have no idea if that means that it's high risk that you file your trademark, or if it means that you will absolutely get rejected, or if it means you're totally fine, because it's just a list of trademarks that are kind of similar to yours. So when you actually have an attorney who can analyze that search for you, you actually can understand what the level of risk is and what kinds of roadblocks you could encounter as you go through the application process.

So for my clients, I give them that list of results, but I also write a letter that says these are the ones I'm the most worried about, because that list is like 400 pages long. We're not worried about every single one. Maybe there's three to 10 that are the most similar. So here's a list of ones that I think are the most similar, and then a paragraph that explains here's why I flagged these ones. Here's how risky I think they are, in terms of like, yes, we should definitely move forward. It's kind of a middle risk, let's talk it out, or no, we absolutely should not move forward. You have to reevaluate. And then so I write that letter, and then we also get on a call to actually have a conversation about the risk level. And that's just not something you have enough info to really do on your own to evaluate on your own. That comes from experience, it comes from having seen a lot of cases, it comes from, you know, sitting through the classes and learning this stuff, which is just not what your background is unless you're a trademark lawyer, right?

And then if it does come back in that, you know, yellow light, red light category where there's going to be a problem with the application, you can strat there are strategies you can use to decide whether to move forward to make your application stronger. You can do it by changing your classes, you can do it by changing the mark that you apply for, adding some words onto the end. And that's another thing that, you know, an attorney is going to be able to give you suggestions of ways to move forward if the search didn't come back in your favor. So that's just one piece of the strategy.

Another place it comes up is in choosing classes and writing class descriptions. So trademarks are only protected in the classes that they're registered in. So there the USPTO has a list of 45 numbered classes. They're numbered one through 45. They're basically categories of goods or services. And you have to pick the class that matches what you do and sometimes pick multiple classes to make sure you're covered all the way around. So, as an example, if somebody teaches digital marketing, the advertising and marketing services class is class 35. The education class is class 41. So if somebody has an agency that has both done for you and DIY products and services, then they would be both in class 35 for the done for you marketing services, but they'd also be in class 41 for the educational elements, education and entertainment.

So online courses are in 41, but their marketing services are in 35. So if you are just typing into a form, I have a marketing agency, that person on the other end of the form, if they don't talk to you, if they don't research your business, they're gonna pick class 35 and they're not gonna realize that you also need class 41. For that kind of thing, you really need an attorney who both understands classes and understands what the USPTO wants to see in terms of what goes in which class, and then who also takes the time to get to know your business so they can match those things up. And I've had situations, I've had clients come to me after filing through a service or through LegalZoom, and I look at their application and there's just one sentence, it's whatever they put into the form is whatever that attorney put onto the application, but that's not going to be a valid class description. It's not going to be a class description that matches everything or covers everything that they do because the business owner doesn't have the knowledge to be able to use the right words.

And then if the service or if the attorney at the trademark mill doesn't take the time to actually research the business independent of whatever the client put on the form, then they're gonna end up with classes that don't actually protect their trademarks.

All right, so that's the strategy element. There's a lot of knowledge that goes in the trademark process is long and complicated, and there's a there's things that you need to know to be able to get it right. And having an attorney means that you can have the strategy to do it right the first time. So I guess that's really that's kind of two things. Strategy, having the strategy, having somebody on your side who can help you with that, and then also making sure that you do it right the first time. So a couple of things on that. Like I just said, you know, if you're just filling out a form on this the website of a service and they're plugging in your answers to the application, it's not necessarily gonna come out right the first time. And there's no do-overs.

There are certain things in app in a trademark application that you cannot fix later. You have to just scrap the application and start over. And I've had to do that for clients before when they started their registration with somebody else and then came to me when there's an issue later on, and I say, Well, this is not, this is an error that we cannot fix with an amendment or an adjustment to the application. We have to start over. And then they lose that filing fee, they lose the eight months that they had to wait to find out that there was a problem. It's not fun. So having an attorney who's familiar with the process and takes the time to get to know your business, make sure that you're not wasting money on the filing fees, you're not wasting money paying the service for something you're gonna have to fix later.

The next piece of it that I think is really important is having that guidance through every step of the process. There are basically three phases in the application where you're probably going to need help from an attorney, and that's the search, the application, and office actions. So after you file the application, the USBTO is going to look at it, see if there's any questions or issues that they have, and then they're gonna submit. If there are, they'll send you a letter that's called an office action. It's basically a request for changes to the application. So if they do want any changes, that's the third place where you're gonna need help.

The search, the application, and office actions. So with a service or something like LegalZoom, you have to pay for each of those things individually. Sometimes they don't even offer the search. Even a lot of law firms or attorneys will have you pay individually. A good attorney won't let you file the application without having run the search because the whole point of the search is to make sure you're safe to move forward with the application, you're not wasting your time paying the filing fee, paying the service or the lawyer, only to find out the exact same thing was already registered and it was all a complete waste of time and money.

So a good attorney will require you to do the search first, but they won't always have it all together in one package. And most attorneys, they'll have you pay for the search and the application, and then you'll have to reach back out to them and pay again if you want help with an office action. So what I do is I just include all of that in one package. You know that I'm available for the office action because I plan it that way. You're already in my calendar, you're already on my client roster, I'm planning on helping you out with that phase of it. And there's no surprise charge later or more money that you have to pay that you don't know about up front. It's just included, so you don't have to worry about either finding an attorney.

You know, if you use the service, you'll have to find an attorney who can actually respond to that office action for you when it comes up. And you won't know ahead of time what the cost for that is gonna be or if they were even available. I I have also seen a lot of people who file on their own and get an office action and then they just get overwhelmed, they don't know what to do with it, how to respond to it. And it might be a simple solution, just a small tweak to the application, and it would have gone through, it could be fixed and go through. But most people, if they file on their own and they get an office action, they think that means they're rejected. So they just give up and then they don't get the registration and they've still paid the filing fee and waited all that time. And this is actually so common that if I have a client who has who runs a search and there's something close that's pending, not approved yet, but pending, I will go check if they have filed with a lawyer and I'll tell my client, okay, they filed on their own. That means it's much less likely that they're actually going to succeed, so it might still be worth it for us to file and just wait, wait until their application fails, and then we'll get through. And I feel kind of bad saying that, but it is common enough that it's a good strategy.

I have had a client where we filed an application knowing that there was a pending application that was similar, and it actually worked out for us because the person got an office action and they just never responded because they weren't represented, they didn't know what to do, they just it was an easy one to resolve and they just didn't answer. And that was to my client's benefit because they got their application through and now they have a trademark. So it really is a huge benefit having somebody with you every stage of the process to make sure that you know somebody's there to answer the questions that come up and resolve any issues because usually that's gonna be something small that's manageable if if you have somebody who knows how to manage it.

Alright, I've been talking for a while already, but I do have one more thing that I want to say on this. So the strategy, making sure you get all the way through, having somebody on your side to guide you, all of that is super important. And that's on the positive side of why you why I think you should have an attorney register your trademark for you. But on the less happy side of it is that if you work with an attorney, you are much less likely to get scammed. And I know that sounds far-fetched, but with trademarks, scams are so common. They are so common that the USPGO has warnings about it on their website, they have warnings about it throughout the application process. I warn my clients about it. So here's what I mean by scams. There's kind of two different layers to it.

So, number one, I already said you are allowed to file your trademark application for yourself. An attorney is allowed to file a trademark application for a client. A non-attorney is not allowed to file a trademark application for someone else. So if you use a service that files a trademark application for you but does not have any attorneys processing that application, that is fraud. There are thousands of trademarks that have been invalidated because a service without any attorneys in sight filed those trademark applications. The USPTO found out and then voided all of those trademark registrations. It's a service that looks totally legit. They take your money, they take your filing fee, they file your application, and then months or years later, you'll get a notice in the mail that says the USPTO has voided your application due to fraud.

I have had multiple people come to me after this situation, and there's nothing that I can do about it. You can't revive an application like that, you can't revive a trademark like that. You're out the filing fee, you're out the money that you paid the service. So you really, if you're doing it through a service, you really have to make sure you're picking one that is legitimate and that has attorneys, and that can be really hard to tell because they're good at looking legitimate. So on the I said there were two sides to this. So that's one, if you pick a service that turns out later to be fraudulent, you don't have an act, you don't have a trademark.

On the other side of it, if you register yourself or if you use a service that's legit or use a trademark mill, which despite the term, those are legit. They just are less customized and personal. If you use something that all they do for you is file the application and then you're done, or you do it yourself, you will 100% you will get letters in the mail saying that you owe additional fees to complete your registration. These are scams, they are not real. And they will also, there are companies, there are lots of companies like this. The USPTO has lists of them that you can look up. They also have a phone number that you can call if you face a scam to confirm, you know, if you actually owe something or not.

But these companies will look at your application and they can tell based on your application if you've filed using a lawyer or not. And if you've not, then they'll also call you on the phone and convince you that it's the USPTO calling and that you owe additional fees and to pay with your credit card over the phone. And it looks legit because they spoof the USPTO's number. You can look up the number that's calling your phone and it says it's the USPTO, but it's not. So if you do decide to file on your own, the USPTO will never call you and ask you to pay fees over the phone. That's just not something that they do. So that's a red flag. If you have a lawyer, your phone number isn't going to be on the application. The lawyer's phone number is, so they won't call. They will send letters, but my clients take pictures of them.

So, first of all, it's in my emails. I tell them, hey, look out for an email that says or look out for this kind of notice and tell me if you get one and I can tell you if it's real. So they just take a picture of it, email it to me, and I say, Nope, that's not real, don't peg it. And they have the peace of mind that they're not either failing to pay a required government fee, because that's what these companies are preying on, or paying it and then realizing that they got scammed. With an if you have an attorney who doesn't charge you for every single email, my package includes communication with me throughout the process. So so if you have access to an attorney, a trademark attorney, you can just say, Hey, do I have to pay this or not? And they'll tell you no, and you have that peace of mind.

So, bottom line is this there are some legal pieces of running a business that you can do on your own. Sometimes it's not worth it to pay a service just to fill out the form for you. But when it comes to trademark registration, that's not the case. I do recommend have having a lawyer who goes through the entire process with you from search all the way to resolution because there's a lot of places where things can go wrong and the attorney knows how to navigate that.

So if you think that that might be the right next step for you, or if you want to learn more about trademark, the trademark registration process, what things you might want to get trademarked, I just created a brand new video guide that walks through all of that, what a trademark is, how to get registered, what the benefits of registration are, and what it looks like to work with me, my packages, all of that. So I'll put the link down in the show notes to that. And it's a short video, it's probably shorter than this podcast episode. And when you sign up for that, you have an opportunity to also apply to be one of my trademark clients so that I register your trademark for you. I have some spots this month available.

So go ahead down to the link in the show notes to sign up for that free video to learn more about the whole trademark registration process, if it's the right thing for you. And once you submit the inquiry form, if you want to work together, we can also chat through, you know, whatever questions you have and make sure it's a good fit. Thanks so much for hanging out with me today, getting all the way through this one, and I'll see you in two weeks.