On its surface, the trademark application filing process is relatively uncomplicated. The trademark office offers an online form for preparing and filing your trademark application and it’s simple and easy to use. All you need are basic computer skills and — voila! — you have a trademark application on file.
If it’s all so simple, why does our firm see so many issues?
1. The Application is Too Good (and Easy) to Be True
The first and most common problem people get into with DIY trademarking comes with the supposed simplicity of the form itself.
As you’re putting together your trademark application, there are a lot of selections to make, certifications to attest to, documents to upload, and correct language to use. All of these nuanced details impact how the trademark office judges your application. Without a clear understanding of all of these things, you might receive an unfavorable response from the trademark office months after your initial application, possibly even after already using your mark in a public-facing way.
While it might be easy to get started on the forms, push the ‘submit’ button, and pay your fee, there are a lot of hidden traps you can fall into if you’re not clear on what you’re doing.
Unfortunately, if you do fall into one of these traps and submit your application, you won’t know until you receive a response from the trademark office after the typical wait time of three or four months. At that point, not only did your mark get rejected, you may have already invested time and money into building your brand.
2. You’re Not Automatically Protected
Many trademark DIY-ers don’t quite understand their rights. Some assume that as soon as they submit their trademark application, they have rights to use the trademark.
However, this is a false sense of security. Without knowing the precise status of your brand rights, you might begin using improper terminology, make incorrect representations to the world about the status of your brand, and/or incur some financial risks or other legal liabilities.
Additionally, the trademark office may come back to you and let you know someone else already has prior rights to your same brand. Now, if you’ve gone ahead and used the mark just because you thought you had the right to by merely submitting your application, you’re suddenly in the wrong.
3. Your Brand Might Infringe Someone Else’s Trademark
One trap that many people fall into when taking the DIY trademarking route is that they don’t truly understand how to search for other trademarks that might precede their own.
The trademark office offers a search engine where you can type in a phrase, like your business name, and see marks that meet your search criteria.
Many people use the search engine and, if no direct hits show up, assume they’re in the clear.
However, the trademark office search engine is not fail-proof and not sophisticated enough to show you all the trademarks that might be similar to the one you want. It is a simple interface that gives simple results. Most don’t understand that common trademark “workarounds” such as phonetic equivalents, misspellings, and the like are not going to be enough to avoid trademark infringement. And these subtleties often don’t show up in a simple search at the USPTO.
4. You Must Understand and Prove “Use in Commerce”
In order to get a trademark registered in the United States, you eventually have to show that you are actually using the mark in commerce, which means that you are essentially offering for sale, or selling, the products identified in your application in connection with your brand.
That concept can be hard to grasp for some people. They think just by putting the words in an article or using it in a PowerPoint slide, that’s enough. . . but it’s not. Trademark applications filed by foreign entities frequently stumble on this issue as many countries do not require proof of use as the U.S. does.
You actually have to sell the goods across state lines, in a federal “use in commerce”-type environment. Not fulfilling this requirement will lead to a rejected application or a registration that is subject to cancellation if this use was alleged inappropriately.
5. DIY Legal Platforms Do Not Necessarily Provide More Safeguards
If you think you can register your trademark using a DIY legal platform and benefit from more legal protection, think again.
For a trademark application, popular self-service legal platforms give you a form to fill out, but it basically just asks the same questions that are on the trademark application. Then, the service’s clerks take that information and fill out the trademark application on your behalf with the information you’ve provided.
You won’t eliminate any of the pitfalls discussed above, as you rarely actually have a conversation and interaction with a legal representative that can help you avoid these.
Doing It Correctly Now Saves Time and Money Later
DIY trademarking can cost you both time and money, as well as potentially get you involved in some legal issues if you end up on the wrong side of a trademark infringement claim.
As is in most IP law cases, the best route is to make sure you properly protect and register your brand right from the beginning. If not, fixing your mistakes at a later date can be much more costly.
Questions about protecting your intellectual property? Schedule a consult.