Finding the right website to register your valuable trademark assets can be difficult. Trademark registration is a very detailed process requiring detailed knowledge of trademark law and the USPTO rules of practice. Many of the websites that offer trademark registration services make the process unnecessarily confusing. As just one example, many online trademark registration services offer multiple packages to choose from - some of them at temptingly inexpensive rates. The average businessperson who simply wants to know "how do I trademark my brand?", and has little if any legal knowledge about how to trademark something, will not be able to intelligently decide which package is best for his or her needs. The good news is that there is only one process for properly registering a trademark. You should look for a service that understands this, and is willing to be honest about it, instead of offering shortcuts just to make some money. If you see "cheap" package deals, avoid them like the plague. These will put your trademarks at risk because they will not do everything that is required to ensure you will obtain your trademark registration. Worse yet they can expose you to the risk of a trademark infringement lawsuit.
There are two categories of trademark registration services. The first are document filing companies. The sole function they perform is filing a trademark application using the exact information that you provide to them. They are a middleman that adds no value. Because they are not trademark attorneys, these companies can not legally represent you at the U.S. Patent and Trademark Office (USPTO), so all correspondence from the USPTO will go directly to you. You will surely want to hire a trademark attorney to respond appropriately to these notices (referred to as trademark office actions). In many cases the responses require a deep knowledge of trademark law and experience in dealing with the issues raised.
Once a document filing company files your trademark application, their job is done. Often, this is not clearly disclosed on their websites. The first thing to look for on the website is in the disclaimers at the bottom of the home page. In many cases, the document filing companies will state that they are not a law firm and thus can not offer legal advice. If you do not see this, you should still look for certain telltale signs that you are not dealing with a trademark attorney. If the service does not include any work after the application is filed, or if they do not state that they will analyze the results of a trademark search, it is a document filing company. Only attorneys can do these things (in fact there are serious questions about whether document filing companies can even file your trademark application for you but that is the subject of another article). Clearly, these services are being less than honest when they advertise that they can register your trademark because, as I have explained, they merely file an application and leave you on your own to finish the process.
The second category includes services provided by trademark attorneys. The ONLY way to register a trademark from start to finish is by using a trademark attorney. Simply put, any other service CAN NOT PROPERLY REGISTER YOUR TRADEMARK for you. This is because only an attorney can provide legal advice. It is not possible to have confidence that your trademark application will be successful without the advice of an attorney in several areas. Trademark attorneys can evaluate a trademark search, draft an appropriate specification of goods and services, advise of which filing basis is appropriate and respond to substantive issues raised by the USPTO Examining Attorney (this is just a short list).
So now that you know you must narrow your search to trademark registration services that are provided by trademark attorneys, what do you need to look for in their offerings and how do you find the right one for you? Perhaps the best search term to use is "flat fee trademarks" or "compare trademark attorneys". All of the top trademark registration attorney websites offer flat fees and will advertise that on their websites. A flat fee is the only cost effective way to pay for this service. There is simply too much risk in paying an hourly rate for a trademark attorney and they understand this. It's no wonder that they all offer flat fees. The flat fee is relatively uniform across the top attorney services so your comparison should be based on non-price factors and these are significant! There are a few attorney provided services whose high fees are way out of line with the others. These tend to be large law firms with a lot of overhead to cover. There is no benefit in choosing these law firms. You will be as well served by an exprienced trademark attorney with a solo practice specializing in trademark registration. In some case these attorneys worked for law firms or corporations before starting their own practice.
The following is a list of the factors that differentiate the virtual trademark attorney offerings. This information can be difficult to obtain from the websites, so at the end of this article I provide a link to a very useful chart that compares many of the top trademark registration attorney services for most of these considerations. The chart contains information objectively obtained and verified from the websites and is up to date as of the writing of this article.
o Does the attorney include responding to "substantive office actions" or merely "non-substantive office actions in the flat fee?
If the attorney only includes responses to non-substantive office actions or otherwise limits the time that he/she will spend on prosecuting your application (there are various tasks involved along the way, such as filing certain kinds of evidence, filing certain required forms and taking other necessary action to keep the application alive and well) then you are not really getting a flat fee, are you? So be sure that these tasks are included in your flat fee.
o Do you get your money back if your trademark search reveals problems and you can't file for your trademark?
This one shocks many people. "You mean I might pay for NOTHING?"...indeed you might. There is no guarantee that a trademark search will be successful. In some cases, the search will reveal that there are one or more existing trademarks that are confusingly similar to your desired trademark and that will block your registration. In that case, what happens to your flat fee? Some attorneys will simply keep your money, some will charge you only for the search, some will offer a discount on a new search and at least one will give you another full search for free. Find a trademark attorney who will run an unlimited number of knockout searches before doing a full comprehensive trademark search. Knockout searches are easy and less expensive (to the attorney) to do. These searches will make it much more likely that your comprehensive search will not disclose any problems and thus, that you will be able to proceed with your registration.
o Does the attorney give you UNLIMITED consultation time?
As a trademark attorney I know that the process is very detailed and that it requires much communication between the attorney and the client to ensure that the application is filed correctly. This is why the flat fee is critical. I have often worked for several hours before filing the trademark application. This is often necessary to ensure that the application is filed in a manner that will avoid potential problems during the process. There are some things that can not be fixed once the application is filed so it's crucial to get it right from the start.
o How many classes of goods and services are included in the flat fee?
Most attorneys only include one. A few include more than one. The more the better. Often your products or services will cut across multiple classes and you should not have to pay more (even though it requires more work on the part of the attorney).
o What does the attorney disclose about the USPTO fees?
One of the most common traps involves the official fees that you are told about. The filing fee for a trademark application is either $ 275 or $ 325, per class of goods and services. It is quite easy to qualify for the $ 275 fee, but most attorneys will simply disclose the $ 325 fee because there is less work involved in getting you that fee. In some cases, the attorney will in fact pay the $ 275 fee and pocket the difference! Look for an attorney who tells you that you will get the $ 275 fee whenever possible and that this is in most cases.
As an informed buyer of trademark registration services you can more confidently find the online service that will maximize your chances of getting a trademark registration in a cost efficient and professional manner.
Gene Bolmarcich, Esq. is a trademark attorney who understands how to trademark brands and logos, having registered close to a thousand trademarks in his career. Gene has prepared this chart where you can compare trademark registration services from popular flat fee trademark attorneys.
Orignal From: How To Trademark a Brand or Logo Online
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