Trying to Save Money with Do-It-Yourself Trademark Filings? How to Avoid Creating a More Expensive Headache for Yourself
I have been working with a number of start-ups in this recession tried to save money by filing their own trademarks, and ultimately ended up creating a more expensive headache for themselves because of mistakes they made in the application.
If your start-up is one of those businesses that is trying to cut corners in this recession, I would of course recommend that you at least pay the money to have an attorney review what you are filing before you file it.
However, if you are too cash-strapped to pay more than the USPTO filing fees, then I have a few tips for you:
(1) If you are filing an application on a name rather than a logo, pay the extra money to have a designer stylize your name rather than filing the words of the name in black type. Many of the problems I see with do-it-yourself applications arise where entrepreneurs just file the application on words rather than the stylized words. In my experience, the stylized words are more likely to receive a trademark than the words alone.
(2) Do a search on the USPTO website for the words in the name individually and, where there is more than one word in your mark, do searches of the words in various combinations, and just pick the key words in the name and search those. If your mark is already in use, look at what it is in use for and decide how close the current use is to your use. If the uses are similar, it may be best to pick another mark. You should also do a search of any images in your mark on the USPTO website to see if there are any similar marks currently in use.
(3) Do not make up from “scratch” your description of the services that your mark will describe. Instead, find the Trademark Acceptable Identification of Goods and Services Manual on the USPTO website, and try to find an approved USPTO description that refers to your services. You will have to pay a filing fee with the USPTO for each class that you select, so I generally recommend that entrepreneurs pick initially the class that most closely describes the goods or services that the mark covers and then list as many of the approved descriptions in that class that describe your goods or services as possible. Then, after you have compiled a list of the approved descriptions, you should put them into a paragraph format that reads well.
(4) Put together an example of the mark’s use in commerce to submit as your “specimen” to the USPTO, and make certain that the example that you submit refers to the services listed in the description you just wrote. If you don’t have an example yet to submit, then you may need to file an “intent to use” form, which will cost you an extra $100 ultimately, but will give you some extra time to create your example.
(5) If the USPTO writes you about your mark after it is filed, find the name of the attorney who is writing you and pick up the phone and call him or her rather than filing responses that may not address the questions or concerns of the attorney. If, after calling the attorney at the USPTO, you still do not understand what you need to do to get your application through the USPTO, then at that point, you should solicit the assistance of an attorney. The USPTO gives you six months to respond to USPTO correspondence, so take the time to pull together the money to obtain further assistance; however, you should not wait to the very last minute to obtain further assistance.
The bottom line: trying to save money by doing your own trademark filing can backfire and result in your spending even more money to clean up what you did yourself, so it’s always best to at least have an attorney look over your application before you file it. However, if are too broke to do even that, following these steps should minimize your risk of wasting your filing fees or ultimately creating a more expensive headache for yourself.