A Google search for Trademark Registration will return a plethora of results including:
- ‘$69 Online Trademark Filing’
- ‘$49 File a Trademark Online’
- ‘Trademark Filing – Save $1000 vs TM Attorney’
These services have become increasingly prevalent. To otherwise savvy business people – entrepreneurs who are cautious about expenses and are accustomed to doing things themselves, and foreign companies with great products but are unfamiliar with the intricacies of United States Patent and Trademark law – these advertisements that tout low-cost and filing ease may seem intriguing. But using such services can be costly – in fact, crippling – particularly in cases where the business is investing in and dependent on the roll out of its branded products.
Sites like these boast tens of thousands of clients, taking an intricate and sometimes complex legal process and treating it with about as much consideration as an item on a factory conveyor belt.
Our firm has worked with several clients who have fallen victim to online trademark factories, finding out the hard way that trademark applications filed with the US Patent & Trademark Office were not properly prepared. They’d received no advice about the legal problems that could result from filing an application that’s incomplete or contains inaccurate information and had already spent significant amounts of money developing products, packaging and marketing materials. They thought they had a valid trademark and were shocked to be on the receiving end of a cease and desist letter.
Additional horror stories of these services, which may or may not be located in the U.S., include employing non-lawyers to prepare registration filings – which is illegal except in cases where law firms have paralegals or legal assistants working under the close supervision of licensed and qualified attorneys. Also, given the “virtual” nature of their models, these services may come and go and, if one goes out of business or is unresponsive after the filing is done – when amendments or additional materials may be required – the client is left on their own, facing deadlines and, perhaps, serious issues that need to be addressed.
That is why the U.S. Patent and Trademark Office’s website clearly states: “… if you want someone to help you or give you legal advice, you need to hire an experienced trademark attorney who is licensed to practice law in the United States. Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you. Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity.”
In a competitive business environment, it is often crucially important to be first to market with a product and to gain a high level of visibility and customer awareness quickly. If there are delays in filing a trademark application, it could result in a loss of priority and enable a competitor to file its application first. That’s merely one of the many issues we’ve seen from these online services. Others include:
- Failure to provide accurate information to clients about whether their proposed trademark qualifies for federal registration.
- Having a registration cancelled by a competitor because of innocent, yet false statements made during the prosecution of a trademark application or renewal of a registration.
- Applications becoming inadvertently abandoned or registrations cancelled because of a lack of follow-up.
- Submission of improper commercial specimens that are required to demonstrate use and application of the mark.
- No follow-up post-filing to guide clients through the rest of the registration process.
- No support for clients when applications face opposition, potential infringement or petitions for registration cancellation.
Mass market online filing services simply do not give their clients the time and attention they require and deserve during the trademark application process. The money clients end up spending trying to fix mistakes – in legal fees, settlements and redeveloping products, packaging and marketing materials – would have been better spent doing it right from the start with a professional who is qualified to advise and guide them.
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