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Legal Road Map® PODCAST
Autumn Witt Boyd is an experienced lawyer who helps ambitious and creative business owners reach their big goals. Together with her team at The Law Office of Autumn Witt Boyd PLLC, Autumn guides online and e-commerce businesses as they grow. She has special expertise in copyright and trademark issues, and her firm offers full-service legal support to creative businesses. As host of the Legal Road Map® podcast, she teaches business owners how to protect their rights and stay out of legal hot water.
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 denyyour 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 nothelp 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.
*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.