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.

*Legal Road Map Sessions, Q&A calls, Individual Legal Projects, and Retainer Services are only available to businesses seeking advice on U.S. intellectual property issues; businesses seeking advice on online business, technology, and e-commerce issues; and businesses located or registered in Tennessee seeking advice on local business law matters.  Autumn Witt Boyd is licensed to practice law in Tennessee and other attorneys who work with our firm may be licensed in other states.

Our firm does not work on any patent law matters.

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I came to the AWB Firm not knowing much about trademarks other than that I needed to register mine. Autumn and her team explained things to me step-by-step as they moved through the trademark registration process, only bringing me in when I absolutely needed to be included. The AWB Firm is reliable, consistent, and easy to work with, and I would highly recommend them to anyone who needs a trademark for their business.

Kelsey Vasileff

I came to the AWB Firm because another company tried to register my business name and sent me a cease and desist letter. Autumn successfully obtained a trademark for my company name, which meant I was able to avoid having to change my business name and starting over with building brand trust. Autumn is a well rounded small business attorney that can not only assist with many legal issues but can also advise proactive steps that can help protect your business.

Chris Carlino

When I was ready to protect my brand, since I’m a lawyer myself, I knew I wanted to work with an attorney that specializes in trademark law. The AWB Firm helped my business obtain its first trademark and we’re working on a second. Their team works really hard to not only hold clients’ hands as they walk through the legal process, but they also strive to educate clients so that they can make informed decisions. We recommend the AWB Firm all the time!

Ashley Meyer

Autumn really ‘gets’ entrepreneurs. I came to the AWB Firm for help with a trademark registration. I had been putting this project off because it felt a bit tedious, but Autumn and her team took care of everything and did a great job. Autumn is the opposite of a stuffy, old boring lawyer – friendly, real, personable, human. I highly recommend working with her and her team.

Brigit Esselmont
When I came to Autumn for help with copyrights for my surface pattern collection, I felt totally clueless about the legal needs for my business. I had no idea where to begin. After devouring ALL the episodes of the Legal Road Map® podcast, I knew Autumn was the right attorney to help me accomplish the goal of protecting my work. I highly recommend the AWB Firm!
Esther Nariyoshi

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!

Emily Cretella

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.

Jessica Principe

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.

Stacy Tuschl

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!

Reina Pomeroy

I have and will continue to recommend Autumn to other creative entrepreneurs. I was able to gain confidence around copyrighting my intellectual property. The copyright gives me more confidence to allow my course to grow and reach more people, while still staying protected. Autumn made me feel like I was the only client she had. She listened really well and understood my situation fully. Just having someone to talk with about it all was very reassuring. Autumn cares, knows what she’s talking about, is extremely professional and instills a great confidence in her clients!

Melissa Camilleri

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.

Tonya Rineer

Disclosure: Our clients did not receive compensation for sharing their experiences working with Autumn, and do not receive any compensation for referring new clients (this is prohibited by Tennessee ethics rules).  These testimonials or endorsements are not a guarantee, warranty, or prediction regarding the outcome of your legal matter.  We cannot guarantee results; past results do not guarantee future results.