Many business owners think they can register a trademark themselves using an online service.
Why not save yourself a little money, right?
But those business owners don’t realize that they’re trading in their savings for a lot of headaches, and they could be jeopardizing the whole process to boot.
Hiring an attorney to register your trademark ensures much better guidance and advice, a smoother, less stressful experience, and an increased chance for successful registration.
And when approximately 1 in 5 trademark applications gets rejected annually, you want to do everything in your power to ensure your application is among the ones that make it through.
**Before we go any further, we need a disclaimer: this is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Benefit from working with a licensed attorney
While a lot of online service providers would love to make you think otherwise, most of them are not licensed attorneys.
So, then, who the heck are you paying to register your trademark when you use an online service?
Your guess is as good as mine.
The only way to ensure you benefit from hiring someone reputable and licensed to guide the way is to hire an attorney for trademark registration. Preferably one who specializes in that area.
Your attorney will conduct a comprehensive search
One of the first steps in registering a trademark is to do a thorough search to make sure there aren’t other businesses that already use the name or mark you want to register.
This is important because the results will allow your attorney to weigh in on your chances of registration success. And whether it’s worth your time—and the investment—to continue.
Conducting a comprehensive search isn’t the same as a clearance search with a quick look around Google or social media, either. It’s an in-depth process that covers federal, state, and common law and explores as many different avenues as possible so you can rest assured you’ve done your due diligence as a business owner.
Most online service providers don’t conduct searches, let alone thorough ones. They just… take your money and move on to the next customer.
This is a major problem (beyond the obvious) because failure to run a proper trademark search can mean you’re guilty of acting in “bad faith” and could actually cost you damages if you end up trying to register someone else’s mark.
Your attorney can respond to USPTO refusals
The United States Patent and Trademark Office (USPTO) is pretty particular about what does and doesn’t qualify for trademark registration.
If your application is met with a refusal, you or an attorney must file a response within 3 months, or your application will be abandoned if you haven’t paid to file a request for an extension.
And that would be a shame—and a waste of money—after you’ve come so far.
Most online services don’t include this in their pricing, so you could end up paying a lot more than you bargained for down the line if things take an unexpected turn.
Filing for trademark registration with an attorney provides peace of mind
The process of registering a trademark can be complicated, time-consuming, and filled with deadlines.
When you use an online service provider, you’re really choosing to tackle the journey on your own, which makes it easy to get overwhelmed and make costly mistakes that could jeopardize your whole application.
Hiring an attorney to help with trademark registration takes the stress out of the process and gives you total confidence that everything is being handled correctly.
And if anything does go wrong, you’ve got someone in your corner who can fight for your business.
Hiring an attorney to register your trademark will always be the clear choice to save you money, time, and headaches in the long run.
If you want to file for federal trademark registration in the United States, you can work with a licensed trademark attorney by booking a consultation with Nicole Cheri Oden Law.
You’ve all but cried yourself to sleep deliberating the perfect business name.
You’ve invested countless hours brainstorming a tagline you can use on your website, business cards, social media accounts, and beyond.
Your branding is in place and you’re ready to share your genius with the world.
But what if someone told you had to start all over again and there was nothing you could do about it?
Unfortunately, that’s all too real for some small business owners.
Don’t bury your head in the sand with the belief that it won’t happen to YOU.
The most important thing you have to do before naming your business, product or service is conduct a trademark search.
Let’s start with a brief overview of what a trademark is.
**But first, a little legal disclaimer: this is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
You should chat with an attorney in your area to make sure you’re protecting your business, okay? Okay! Moving on.**
What is a trademark?
A trademark is any word, name, symbol, or graphic used in commerce to indicate the source of a product.
(Quick note: a service mark relates to a service, but since trademarks and service marks are handled similarly under US law, let’s lump them together for now.)
A trademark could be your business name, service or product name, course name, tagline, logo, and more.
Trademarks may be unregistered under your state’s common law rights or registered (and therefore only protected) within your individual state.
Or they can be federally registered with the United States Patent and Trademark Office (USPTO) for a lot more rights and protection that covers you — you guessed it — federally.
The benefits of registering your trademark
The number one benefit of federal trademark registration is that you can enforce your exclusive rights to that registered mark across the US.
Plus, federal registration means:
- The ® symbol can be used to alert potential infringers of your registration;
- You could sue for infringement in federal court;
- You can recover attorney’s fees and damages if your infringement lawsuit is successful;
- An easier process registering your trademark internationally;
- You’ve secured a valuable asset for your company.
And after 10 years of full statutory protection, you can renew indefinitely, so long as you file the correct forms and continue to use the mark.
That all sounds great, right?
It absolutely is but before you settle on the perfect name for your business, product or service, you need to ensure you aren’t building your whole empire on borrowed ground.
Why a trademark search is vital to your brand
These are the keywords in trademark law: Likelihood of confusion
Because, here’s the thing — even if your trademark isn’t an exact match for another, it also may not be similar enough to another mark that a consumer is likely to be confused about the source of the product or service.
To make that determination, you have to look beyond the similarity of the marks themselves to the relatedness of the goods and services.
Let’s look at an example:
Delta (airline) and Delta (faucets)
Same name, both protected under federally registered trademark laws. How can that be?
Because a consumer is highly unlikely to confuse their bathroom sink with an airplane.
But you can’t be confident your own business, product, or service name will avoid potential risks or liability issues until you conduct a trademark search.
Conduct your own “knockout search” before a comprehensive trademark search
Before you spend good money hiring a lawyer to conduct a trademark search for you, do your best super-sleuth impression.
- Look on social media sites
- Check out domain hosting sites
- Dig around beyond page one of Google
- Check for existing registrations within your state and federally
If your quick peek around shows no existing conflicts, you’re ready for a much more comprehensive trademark search.
Your trademark search will dive even further into corporate and trade name filings (including common law usage) within your state and a complete look at registrations within TESS (Trademark Electronic Search System) through the USPTO.
To make sure similar matches are ruled out, your trademark search will also include things like:
- different spellings (including homophones like ‘ate’ and ‘eight’)
- singular/plural versions
- foreign language equivalents
- hyphenated and non-hyphenated versions
The key is making sure there is no ‘likelihood of confusion.’
If the names are close enough and in the same or similar industries, I hate to break it to you, but you may have an issue.
In which case, I promise you that name you love so much isn’t worth the headache of a rebrand later on.
A trademark search helps you “look before you leap”
Performing a trademark search before you proceed with the creation of your business, product, or service means you aren’t just jumping blindly off the deep end.
While no one can be 100% sure there isn’t another conflicting mark in existence, you’ll have peace of mind that there are no exact matches out there.
So using your mark won’t lead you down a path that ends with nasty infringement claims.
Plus, when you’re ready to register your trademark, you’ll have drastically improved odds that it goes through without any likelihood of confusion issues.
If you’ve done your own “knockout search” and you’re ready for a more in-depth search, work with an attorney.
You can book your consultation here and get your branding locked down with a federal trademark registration.