Greetings, I’m attorney Josh Gerben and welcome to my law firm’s trademark education center. I built this center to ensure that anyone who is attempting to register a trademark is well informed on the trademark registration process. I feel strongly that many of the non-legal services for trademark registration offered via the Internet are misleading. In fact, every day I hear from clients whose trademarks have been rejected after using one of these services.

The #1 fact that most of my clients do not know is that the trademark registration process is a legal proceeding. When you file a trademark application, it goes through a rigorous review process with the U.S. government. A trademark lawyer for the U.S. government will review your trademark application to determine if your trademark can be registered. Not hiring a trademark attorney to assist you with this legal proceeding is akin to skipping the doctor’s visit and self-medicating. Some people do it, but the outcome isn’t always pretty.

MYTH  #1:  I can conduct an online trademark search for free to determine whether my trademark is “available.” 

FACTS:   A free trademark search will not find the most common reason a trademark application is denied— a similar, but not identical, trademark.  Any trademark search that is conducted using a free search engine (even the U.S. government’s publicly available system) is highly unlikely to provide a full picture of existing trademarks that could cause your trademark application to be denied.

THE BOTTOM LINE:  Do not believe that you can determine if your trademark is “available” for registration and use via a “free” search (whether it be via the U.S. government Web site, Trademarkia, or any other private company).   You could very well spend a lot of money (to the tune of $275-$325 in non-refundable US Government trademark filing fees) just to file your trademark application, only to have it denied.  Worse yet, you may be infringing on someone else’s trademark and liable for trademark infringement.

MYTH #2: I can buy a trademark search report and interpret it myself.

FACTS:   Some online companies provide search reports for clients.  However, these companies do not (and cannot) provide an analysis of the report.  Clients may be given a several hundred page report and told to review it for trademarks that could create a legal problem for them.  This is akin to a doctor telling you to read your own x-ray. Unless you know what kind of similarities between marks can cause a problem, the search report is less valuable than you think.

THE BOTTOM LINE:  It is very dangerous to self medicate.  If you retain my law firm to assist you, we will not only provide you with a search report, but with a detailed opinion letter from trademark attorney Josh Gerben explaining what the results actually mean.

MYTH #3:  I can draft and file my own trademark application, since the form is available online.

FACTS:  The trademark application itself is a complex legal document.  The information provided in your application determines your trademark rights and affects how broadly the protection on your trademark will extend.  Moreover, the US Government has strict legal requirements which must be met.  If you do not properly answer the questions posed in the trademark application, your trademark may be denied by the US Government.

THE BOTTOM LINE:  It can be very dangerous to draft the trademark application by yourself.  You may unknowingly fail to secure the proper scope of legal protection for your trademark, or make a mistake in the application that causes your trademark application to be denied by the US Government.

MYTH #4: If I file my trademark application with any “trademark service” that is not a law firm, they will ensure my trademark application is properly drafted.

FACTS: There is not one non-legal trademark service that can ensure your trademark application is properly drafted.  This is because the trademark application is a legal document and no one besides an attorney can provide you with legal advice.  Keep in mind that any incorrect answer in a trademark application can limit the scope of your trademark rights, cause the denial of your application, and/or allow another company to cancel your registration at any point in the future.  In addition, please be aware, many non-legal services advertise their services in such a way that it may deceive unsuspecting clients into thinking they are actually getting legal advice (any service that is not a law firm is forbidden by law from providing legal advice).  You should always make sure you understand whether or not a “trademark service” is a law firm (like us) or not.

THE BOTTOM LINE:  Even if it saves you a few dollars today to use a non-legal service to assist you with the trademark registration process, it can cost you a lot more later.  If your trademark application is denied, you will lose all the non-refundable government fees associated with the trademark registration process.  Moreover, even if your trademark application is accepted, if you have not properly drafted the trademark application you could have limited very important trademark rights.