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What are the drawbacks of registering a trademark without an attorney?

We are an early stage start-up with a vocation to build a strong consumer brand. We realize the need for good trademark protection yet are currently stretched for cash. What are the risks of registering our trademark ourselves? Can we "fix" any trademark gap or issue down the road if necessary?

10 Replies

Michael Barnathan
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Michael Barnathan Entrepreneur • Advisor
Co-Founder of The Mountaintop Program, Google Alum
Risks of filing are standard: registering in the wrong classes, registering a mark that's too generic or too specific, or not doing a trademark search in advance and trying to register a mark that already exists in your class. USPTO isn't that fast to grant them, so an incorrect filing can cost you time and money. Most mistakes in this arena, you fix by submitting another trademark application.

I don't consider registering a trademark a complex enough process to warrant a lawyer, myself. I've filed several on my own. Actually enforcing the mark is another story.
Gordon Troy
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Gordon Troy Entrepreneur
Trademark Attorney - United States and International, Copyrights, Unfair Competition, Internet and Computer law.
Referring to the comment: "I don't consider registering a trademark a complex enough process to warrant a lawyer, myself. I've filed several on my own." This is true, and the USPTO makes it easy to do so. As an attorney practicing in this field for more than 30 years, we have taken over many cases that are fraught with problems that could have been avoided had the application been filed correctly in the first place. This is an area of the law with exacting rules that have long term ramifications if done improperly. To be clear, we have also taken over and fixed many cases filed by other attorneys, who think they know how to file and prosecute trademark applications. It is not a matter of hiring an attorney, it is hiring an attorney that truly knows this area of the law.
Then, if you are planning on building a consumer brand, you are likely also considering international trademark protection. Here is where the finesse of the United States application process can have long term positive or negative consequences as the law in every jurisdiction is different. So, in addition to US considerations, if you are building an international brand, there is much to consider. On my website (webtm.com in the "info" section) there are a series of pages focusing on the Life Cycle of a Trademark. I encourage you to take a look.
The comment above "Actually enforcing the mark is another story." is absolutely true. However, having a good and solid trademark registration is critical, which requires a properly filed and prosecuted trademark application.
Please feel free to contact me at [removed to protect privacy]. We do not charge for consultations.
Michael N. Cohen
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Michael N. Cohen Entrepreneur
Owner at Cohen IP Law Group, P.C.
To answer your question "Can we "fix" any trademark gap or issue down the road if necessary?" Sometimes yes, many times no. What may seem like an innocuous trademark filing, can have fatal ramifications down the road in a trademark litigation involving your application/registration. For example, if you have made a misstatement or omission in the application, but the examiner allows the application any way, that mistake can come back to haunt you in litigation by the opposing side in the case. If there are hundred of thousands or millions involved, your registration could be invalidated as a result of that mistake. I've seen it happen, even during settlement negotiations I've seen parties at a severe disadvantage because of a mistake a non-trademark attorney made during the filing.

But even more significant is preemptive trademark search. Non-attorneys or non-trademark attorneys, simply cannot evaluate the likelihood of confusion. This only comes with understanding the law and having enough experience with interpreting search results. I've seen many people file applications on their own without getting a trademark search conducted, only later (4-8 months) get rejected. Often times, by then those people have spent thousands or more on marketing and branding only to learn that they cannot use it because of a preexisting similar trademark. Our philosophy at our firm is that preemptive trademark search is the most significant step. Because 90% of our clients do conduct the trademark search through us, we rarely have to deal with office actions rejections in view of likelihood of confusion issues. If you believe your brand is valuable, consult with an experienced trademark attorney to avoid these issues down the road.
David Kostiner
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David Kostiner Advisor
Managing Partner at Counsel LLP
Trademarking through an attorney shouldn't be an expensive process. It is far better to pay a nominal fee to know everything is being done correctly (including for your investors' peace of mind, current and future). And as detailed above, there are plenty of pitfalls which don't initially appear to be so. It is a government filing, after all, which doesn't necessarily correspond with logic. You also shouldn't do your own corporate taxes, even though it is technically possible to do and will save you a grand or two.

As an entrepreneur and attorney (incidentally, trademarks and contracts, et al), I know the value of knowing when my experience and know-how isn't enough. I sometimes hire lawyers to handle complex issues in specific fields that I, my firm or my companies would prefer someone else with more experience handle.

Given the cost of using an atty to file trademarks ($1000-$2000), I'd say its worth the worry to pay someone else. Just like doing taxes.
Rob Gropper
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Rob Gropper Entrepreneur
Director at PetHero, SPC - Member at Eastside Incubator - Principal at Tuxedo Technologies Group
I don't want to side track this conversation, but what about the $$? How much would Candice expect to pay if an attorney/law firm did the work? Are there lower cost resources/methods to getting a trademark properly filed and prosecuted. which presents another question: i have a lot of experience with filing and prosecuting patent applications (i'm not an attorney), but not trademarks. With a patent, the filing is the easy and inexpensive part. The time and cost come from the back and forth with the patent examiner arguing why your claims should be allowed. Is the trademark process similar? What are the 'real' costs from filing to actual allowance of a trademark?
Michael Barnathan
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Michael Barnathan Entrepreneur • Advisor
Co-Founder of The Mountaintop Program, Google Alum
"Often times, by then those people have spent thousands or more on marketing and branding only to learn that they cannot use it because of a preexisting similar trademark"

That's not wise in any case - or at least they should have considered and accepted the possibility of a rejected trademark application before launching their marketing campaign.
Michael Barnathan
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Michael Barnathan Entrepreneur • Advisor
Co-Founder of The Mountaintop Program, Google Alum
Interesting... patents are something I'd never attempt to file on my own, if I were worried about enforcement (rather than simply "owning IP" for acquisition or investment purposes, which is usually why I bother). In a patent case, the scope of your claims can really come back to bite you.

I'm still trying to figure out how someone can screw up a domestic trademark application in a way that's both serious and non-obvious, however. If your mark is too close to another, USPTO will simply reject your application and you'll be out a few months and the filing fee. If you register in the wrong class, simply file in the correct class. IIRC, the application only asks for the mark (which for many is simply a wordmark covering the term one wishes to trademark), the classes you wish to register in, a specimen, the dates first used and first used in commerce, and your contact information. Where in that information is the potential for a subtle screwup?

I'm not doubting anyone and certainly have less experience than anyone who does this for a living, but I'm genuinely trying to understand where the landmines are.
Judy H. Wright
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Judy H. Wright Entrepreneur
Pet Grief Coach & Pet Memoir Author at Animal Human Connection
Wow, talk about divine timing. I was just going to contact an attorney this morning about trademarking. As a startup in a new business, it is difficult to know where to place the limited budget. You have convinced me to spring for the correct information.

Thanks for caring and sharing. Judy Helm Wright
Gordon Troy
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Gordon Troy Entrepreneur
Trademark Attorney - United States and International, Copyrights, Unfair Competition, Internet and Computer law.
Responding to Michael "I'm still trying to figure out how someone can screw up a domestic trademark application in a way that's both serious and non-obvious," --- The list is of potential "screw ups" is huge. There is certainly a good reason why there are so many cancellation actions in the TTAB as well as in the courts on so many different grounds. I have encountered many false declarations, claims that certain goods or services are in actual use, when they are not, improper identifications of owners, false claims of license rights inuring to the benefit of the applicant.... all of which lead to grounds for cancellation. The list goes on and on. Having litigated these issues for 30 years in the TTAB and the Courts (and in foreign countries), all I can say is that stepping in to an area of law that you don't fully know about is asking for trouble. Rather, spending a small amount of money can avoid a large number of problems. In the grand scheme of things, when you consider what it costs to build a brand, the costs to properly perfect those rights are pretty minuscule.
That is not to say that a layman can't file and prosecute a trademark application successfully, but why would you potentially jeopardize a business asset when that risk can be minimized through proper counseling.
Yes, the trademark office has made filing trademarks user friendly, but remember their mission is to protect the register, not to protect the trademark and the trademark owner.
If you decide to file on your own, we would be more than happy to take over a filing when you run into issues. We do it all the time and find that the vast majority of situations can be avoided if the filing was done properly at first.
Rob Gropper
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Rob Gropper Entrepreneur
Director at PetHero, SPC - Member at Eastside Incubator - Principal at Tuxedo Technologies Group
@ Michael B, just to clarify, i have not filed or prosecuted patent applications on my own - always had experienced patent attorneys for that. It is my experience that the "filing" is the easy and least costly part of the process. I often hear IP attorney's tell prospective clients "we can file a patent application for you complete with claims for $x..." The giant omission in that statement is "but to prosecute your application all the way through to issuance of a strong patent will cost more like 10x". I"m just curious if the trademark process is similar - lots of back and forth with BS rejections and nonsensical process or is it more straight forward and predictable?
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