Best of 2011: Trademark do it yourself?

First posted on June 28, 2011.

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.

But 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.”

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.

Originally posted 2011-12-24 08:50:57. Republished by Blog Post Promoter