Why using LegalZoom to register your trademark is a terrible idea
Why should you pay our firm to handle registering your trademark when you could pay LegalZoom a lot less?
It’s simple. You get what you pay for.
Did you know that the trademark system is actually set up to deny your trademark application? The US Patent and Trademark Office (USPTO) actually assigns an “examining attorney” to review every application, and these attorneys’ job is to find a reason to deny your application. The USPTO denies applications for a lot of reasons, but the main ones are that the mark being applied for is not distinctive enough to be registered, or the USPTO attorney finds a similar mark that’s already registered, or because the wrong information was submitted with the application.
Choosing a great trademark is the first step in the registration process.
A trademark has to be distinctive — you generally can’t register a business called “The Plumbing Parts Store” because that’s just descriptive of what you’re selling, it’s not distinctive. There are other tricky rules about trademarks that incorporate your name (usually a no-go) or a geographic location (like “Nashville Tire Store”, again, no good). LegalZoom will not help you choose a mark that’s likely to be registered. We do. This saves you money in the long run, because if the USPTO rejects your application, you can’t try again without paying the full registration fee a second time.
LegalZoom's trademark search will not protect you.
The search that LegalZoom includes in its basic registration will only search the USPTO database for identical marks that have been registered — not any similar mark that the USPTO could (and will!) use to deny your application. We not only search the USPTO database for identical and similar marks using a sophisticated, paid search tool, we also conduct a broader internet search to find out if another company in a similar field is using the mark you want to register.
And, if your company is making a major investment in the brand associated with the mark, we can get an even deeper search that will turn up companies already using the mark you would never have found on your own. This is key, since that earlier company has “priority” over you to use the mark, and could cause your business major problems later, even if your mark is registered by the USPTO.
We also help you evaluate search results. We dig into the background and check out any competing companies using a similar mark. Then we consult with you on a phone or video call to discuss the pros and cons of registering your mark. We help you make the best decision for your business about whether to go ahead with registering that mark, or choosing a different one.
Get an Office Action? With LegalZoom, you're on your own
An “office action” is a response from the USPTO pointing out a problem with your application or asking for additional or different information. About 80% of trademark applications receive some sort of office action. Many can be handled with a simple response, but applicants often don’t know what to do, and end up abandoning their applications when they get one. Abandoning your application means you lose your registration fees, and you lose your place in line, which could allow a competitor to register your trademark.
We handle all office action responses as part of our flat fee, even the more rare, complex responses (which require research and a long legal brief). We can also help you decide whether it’s worth investing more time and energy in a mark that the USPTO has indicated it will deny, or move forward with using or registering a different mark.
With LegalZoom, if you get an office action, you have to handle it on your own, or sign up for their monthly legal subscription plan to get their help.
If you are building your brand and your trademark is a valuable part of your business, investing in an attorney to make sure you register the trademark correctly to get all the benefits of federal registration is money well spent.
You might want to think about saving up for this expenditure to make sure you do it the right way the first time. You will have some “common law” (state law, unregistered) trademark rights just by using the company name in the meantime, as long as no one else was using it first. But you can’t take advantage of additional protections you get with a federally registered trademark unless you go through the USPTO.
Contact us to learn how we can take your trademark registration worries off your plate and help you protect your valuable brand.
*Disclaimer: LegalZoom is a registered trademark owned by LegalZoom.com, Inc. Use of this trademark does not imply any affiliation with or endorsement by LegalZoom.com, Inc.
This website is attorney advertising and does not establish an attorney-client relationship, which is only formed when you have signed an engagement agreement. Filling out the appointment scheduling form does not establish a client-lawyer relationship, and your sending information to us does not indicate that the Law Office of Autumn Witt Boyd PLLC or any lawyer in our firm is willing to consider forming a client-lawyer relationship. Unless the Law Office of Autumn Witt Boyd PLLC agrees to consider representing you, information that you send to this firm will not be kept confidential or privileged.
We cannot guarantee results; past results do not guarantee future results.
Autumn is not a patent attorney and our firm does not work on any patent law matters.
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Before working with a lawyer, I wasn’t sure I necessarily needed legal support and the cost was a hesitation as well. Working with Autumn, I was pleased by how simple it was to take care of the trademark process. She is very approachable and straightforward. I recommend her to anyone who needs trademark services. The process was seamless, and I have such peace of mind knowing an expert is taking care of it!
Since working with Autumn, my business name is now a registered trademark. I learned so much about trademarks during the whole process, such as what I can and cannot do with a trademark. Kindness goes a long way in business, and it’s not something everyone leads with, but Autumn is not only kind, but her work was also very efficient, timely, clearly communicated and thorough. Autumn and her staff are so helpful and quick to respond, they provide thorough and knowledgeable answers and never make me feel like my questions are ridiculous (even if they may have been!). I have already referred another friend and colleague to Autumn’s firm and will continue to do so.
I knew I needed to pursue a trademark and when I spoke with Autumn, she knew all of the questions to ask moving forward and it reassured me that I needed her help since I didn’t know how to do this on my own. Autumn was so knowledgeable throughout the entire process. I realized that even though it costs more to hire someone versus doing it yourself, at least you know you have done it right. If you are trademarking something, that means it is really important to your business and isn’t something that you can afford to do wrong.
Autumn made the entire trademark process super easy and no fuss for me. She is professional, down to earth, and makes the “legal stuff” easy to absorb. Autumn and her team were quick to answer my questions, which I really appreciate. I would recommend Autumn to anyone looking for legal advice on trademarks or protecting their intellectual property.
I knew I wanted to be protected legally but I didn’t even know what I needed an attorney to help me with. Autumn is so approachable, it’s easy to ask her questions because she doesn’t respond with legalese that I don’t understand. She asks questions that make you think and ultimately lead to better legal protection. Since starting to work with Autumn, I have a rock-solid client agreement and now have 3 trademarks approved. I love that I feel like I have an attorney in my back pocket. If I ever have a question or a new legal shift, I can call on Autumn to give me answers! Autumn is a SOLID attorney, who truly “gets” the online business industry with its quirks. She’s flexible and super knowledgeable. I LOVE working with her!