Trademark do it yourself?

The Gifted Amateur

Aaron Franklin, co-founder of LazyMeter — an intriguing project that’s still in Beta but is not what it sounds like — writes as follows on Seattle 2.0:

At first glance, a trademark can be a complicated and expensive legal process. This is the story of how I successfully registered a trademark for a total of $275 (the minimum USPTO fee).

When I started to think about a trademark, I visited a lawyer.  He wanted over $1,000 to manage the process, and told me I would regret submitting it myself.  He said I wouldn’t be equipped to respond if the application was challenged.

Moreover, the application is confusing.  What is a trademark class?  What description should you use for your goods/services? What qualifies as a specimen to prove use in commerce?  It’s no wonder most fork over the cash to a lawyer.

Wondering how it turns out?

I decided to break down the process by researching the implications of making a mistake.  During my research, I found that only 3% of trademark applications are challenged. With those odds, I decided I could apply myself, and then go to a lawyer if it was challenged.

All that was left was filling out the application, and this turned out to be more simple than expected.  Since you can search trademarks on the USPTO Site or Trademarkia, you can find similar trademarks (e.g. competitors) and look for patterns.  Other questions had simple answers as well.  For example, all you need for a specimen to prove use in commerce is a screenshot of your site.  I filled out the form in less than an hour, and 6 months later we received the trademark certificate pictured above.

Hurray!

Okay, so my sarcasm is a little obvious. It isn’t meant to be all that sarcastic. This is, rather, a teaching moment.

Trademark lawyer Ron ColemanBut first, the disclaimers.

I don’t have a substantial practice in trademark “prosecution,” i.e., filing trademark registration applications.  That’s why I don’t write all that much about PTO practice here.  I am often involved in the preparation of more “interesting” applications, or work on applications involving a bigger tactical or litigation picture, but prosecution is not primarily what I do.  So, on that score, I have little or no bias in favor of the employment of lawyers for such tasks.

Moreover, I think in the coming years lawyers will do less and less of this work, whether they ought to or not.  To the extent they do, it will be done by lawyers who make a living by doing a lot of it, and at a very economical price.  (I like Erik Pelton for that, by the way.)

Having said that, I am not even going to pass on the outcome Aaron reports on here except in one respect:  Anyone who looks at the percentage of applications that are bounced by the PTO, or even the question of whether or not you “successfully” obtain a registration, as the only — or even the main — inquiry in this process is, well, a non-lawyer.

Let’s put it this way.  My main work in trademark is litigating infringement claims, see.  And where there is a trademark registration, and I am representing a defendant… let’s just say that first look at the registration is when I reach for my revolver.  And when I am trying to enforce a registration on behalf of a plaintiff, I am often hoping I’ll get no “unhappy surprises” in a registration I’ve inherited from someone else.

That’s because, as most readers of LIKELIHOOD OF CONFUSION® understand well, not all registrations are created equal.  Indeed, a bad registration can be worse for the proponent of an infringement claim, or a trademark holder seeking to protect and enforce its rights, than none at all in some cases.  This is true despite the profoundly lessened threat of cancellation on the grounds of fraud on the PTO, which once could lead to loss of all the rights of registration merely by inadvertent or sloppy over-inclusion of goods and services claimed in the application.

But the fact is, if you end up litigating over that registration, or threatening to, you do have to get the goods and services “right.”  You have to know the difference between stuff you sell and stuff you’re going to sell, and what to call it — because the PTO isn’t always going to “get it.”  You need be right about that date of first use, and to understand the difference between the date of first use and the date of first use in commerce.

You need to make sure it isn’t already someone else’s trademark.  No, the PTO does not do that for you:  They are only looking for potentially conflicting registrations, and even their determination on that score is not something you can hang your hat on if you are sued for infringement.

No, searching the PTO or Google or any other free database does not do that for you.  And with all due respect, even if you find something that way — if you’re not a trademark lawyer, you will not know what to do with it.

I said “trademark lawyer.”

Don’t get me wrong.  A homemade trademark registration — or even one cranked out by Legalzoom or Trademarkia —  could be good for your business.

But unless you’re very, very fortunate, if you ever want to make use of that piece of paper, it’s more likely to be good for mine.

UPDATE:  Similar thoughts via IP Watchdog and a new blog called Trademark Joe as well as the redoubtable Gordon Firemark.  I have also found a related piece on Legalzoom’s unauthorized — and evidently incompetent — practice of trademark law by Morris Turek.  And now, via Cohen, this one from Brandaide.

 

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Author:Ron Coleman

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22 Responses to “Trademark do it yourself?”

  1. June 28, 2011 at 3:12 pm #

    Well put, Ron, and good find for an educational lesson.

    A mentor of mine is found of saying “my job isn’t to get a client a patent, it is to protect the client.” Anyone can register a trademark. Anyone can get a patent. I’ve proudly wired parts of my home quite successfully until, of course, my wiring failed (and almost caused a fire). The wiring’s value was extremely limited, but I superficially thought that everything was good because the outlet had power. I was comfortably unaware of what was going on behind the switch plates. And in the same way, a DIY-obtained trademark registration seems like a smart economic move, because all of the behind-the-scenes considerations that a lawyer would make are unknown to the applicant. Ignorance is bliss, until it isn’t.

  2. June 29, 2011 at 12:17 am #

    One of the reasons I wrote this blog post was to get additional insights into the reasons for hiring a lawyer – so thank you for this careful review. Also, I did try to be clear that hiring a lawyer is best if you can afford it. Finally, I realize I should have noted that our trademark for “LazyMeter” is perhaps more simple than and less competitive than others’ trademarks. Thanks for reading!

    • June 29, 2011 at 12:25 am #

      And thanks for being a good sport, Aaron! You were the sacrificial lamb on a topic that has been just bubbling for a while.

      As it is you did mention at the end that, well, if you can afford it, doing it with a lawyer is probably better. I hope now you have a sense of what you might tell readers some reasons for that might be. And there are others.

      Keep us posted on the Lazy Meter! ;-)

  3. June 29, 2011 at 12:55 pm #

    Looking at the file history for LAZYMETER, I question whether it was approriate to submit a screenshot specimen of use for an ASP under 1(a) if the web application is “coming soon.” Should Aaron refile an application now that the ASP is in Beta?

    • June 29, 2011 at 1:05 pm #

      You are a bad, bad man.

    • June 29, 2011 at 3:07 pm #

      No good can come from an attorney looking at the file history and commenting, one way or the other.

  4. Tal Benschar
    June 29, 2011 at 8:59 pm #

    “For example, all you need for a specimen to prove use in commerce is a screenshot of your site.”

    Only partially true. Correct if it’s a service mark. If a trademark (for goods), not acceptable.

    Of course, the applicant will find that out the hard way when the Trademark Office rejects the specimen.

  5. July 1, 2011 at 2:24 pm #

    I used to believe that it was possible to obtain a patent without an attorney. The last letter from the patent office essentially said that it isn’t possible to obtain a patent without an attorney, and don’t bother trying. I have also discovered that the U.S. Patent Office simply ignores black letter law, the text of the CFR, and their own written procedures about the meaning of “and.”

    I learned my lesson. Patents are for big corporations and those with deep pockets.

  6. tim maguire
    July 3, 2011 at 10:31 am #

    The Property Professor in my NYC-located law school likes to point out that there are few New York cases in our casebook because most New Yorkers use lawyers to buy and sell their property.

    Anyone can complete a real estate deal, but if you want to avoid surprises and litigation, it’s best to have a lawyer do it for you.

Trackbacks/Pingbacks

  1. Heather Balmat - June 28, 2011

    #Trademark do it yourself? http://t.co/b9R66Hx | LIKELIHOOD OF CONFUSION®

  2. sandrabullks - June 28, 2011

    LIKELIHOOD OF CONFUSION® | Trademark do it yourself?: You need to make sure it isn't already someone else's trad… http://bit.ly/kKCIk8

  3. Tom Galvani - June 28, 2011

    oops – from earlier: http://t.co/4vhmCIf – Courtesy @RonColeman – The value of "successful" DIY #trademark registrations

  4. Copycense - June 28, 2011

    @RonColeman on why small business owners shouldn't chintz on paying for #trademark expertise http://t.co/YWCsh7Z

  5. Aaron Franklin - June 29, 2011

    Trademark do it yourself? A trademark lawyer responds. http://t.co/i8ADObT

  6. Mitchell Bragg - June 29, 2011

    So you think you can file a trademark application by yourself? RT @roncoleman: Trademark do it yourself? http://t.co/KyMDcyO #trademarklaw

  7. pchestek - June 7, 2012

    LIKELIHOOD OF CONFUSION® | Trademark do it yourself? http://t.co/GymW2aUh

  8. Brian Rogers - June 8, 2012

    Trademark do it yourself? http://t.co/DRnLSuqy HT @GoetzFitz

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