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DIY TM: Cost vs Value

cost versus value

Several “do it yourself” or online consumer discount legal service sites advertise trademark filings for deeply discounted prices, plus the filing fees.  However, when it comes to trademark filing services, the discount route may not be the best value after all.

The old saying, “If it sounds too good to be true, it is” often applies when deciding whether to rely upon such services.  Before deciding, a business owner should ask:  “Is the goal to successfully register the mark, or to file the application for the cheapest price?”  The information these filing services fail to mention is often more important than the price they advertise.

Trademark applications are assigned to one of several hundred Examining Attorneys working for the U.S. Trademark Office, whose role it is to make certain the applicant’s mark is legally registerable and that filing and use requirements are met.

Due to the complicated nature of the requirements, there is an 80% chance that the applicant will receive an initial rejection, requiring further response.

Companies such as LegalZoom and My Corporation do not serve as legal counsel and do not become attorney of record for the applicant.  This means any official “Office Actions” are addressed directly to the applicant, who must craft his or her own response without assistance.   Without adequate legal counsel, the unrepresented or under-represented applicant is left to decide whether or not to respond, how to respond, and whether registration can be obtained.  It is not the duty of the Trademark Examiner to offer free legal advice to applicants in the absence of proper legal representation.

While some office actions can be easily answered, others can be extremely complex.   Trademark Examiners take their role seriously and make a good faith effort in their duties.  However, they are human and do make mistakes and are not always legally correct in their conclusions or requirements.   An experienced trademark attorney is much more likely to realize incorrect assessments when they do occur and successfully correct them. Moreover, in close cases, the need to present legal arguments and precedents to the Examiner can make the difference between success and failure, registration or final refusal.

What then is the value of paying for the trademark expert to act as your legal counsel of record?    Years of experience in trademark registration are needed to develop a sense of when and if an Office Action can be responded to with success.   Proper planning of the filing before actually filing is extremely important. While a substantially reduced flat fee may at first glance seem to be a good deal, the experience of a true professional can greatly reduce the chances of rejection and help insure that the mark receives the broadest possible protection for the goods or services for which registration is being sought.

Sure, a quickie application may be good enough to get you started… but don’t expect it to take you all the way. More often than not a human legal counsel is required to dot the i’s and cross the t’s, making sure your brand is protected and enforceable well into the future.