i realize hiring a lawyer is the best way to do this. I'm asking for help for the DIY method for this one. thanks in advance? I think it's pretty simple and I plan to copy wording from similar applications.
Yes, hiring an attorney is usually the best way to register your mark, but doing it yourself can still lead to a successful registration. It can be pretty simple, and it can be pretty easy to make a mistake that leads to a rejection, so you really need to do your homework before you submit an application for registration. Your best bet is to avail yourself of the resources on the Trademark Office website. The USPTO has a number of helpful guides, articles, and videos that can assist you in filing an acceptable registration. You will want to make sure that the mark you want to register is available (and remember that trademarks are not like domain names where you can simply change a letter, or add a digit) before you spend the money on the application. You should also be prepared for an initial rejection from the examining attorney; these could simply tell you that you need to fix a typo or make a suggested change, or they may require a more in-depth response to address a concern of the examiner.
You can go to USPTO.gov and follow the instructions to the letter. A simple mistake might cost you the entire registration, so follow the instructions. Also, if you have not done a search you run the risk of learning that someone has superior rights to your mark which may preclude you from using it.
There are now countless non-lawyer service providers like Legal Zoom for example that will help file your trademark. In my opinion this is a very dangerous game and unless you have zero issues with your application and mark this can very often make matters worse. Remember, I am among the class of people that are called when things go very wrong so we see it all here and understand the pitfalls that most will not.
Trademark law is not intuitive and very often mistakes that are made are not realized but for a long time later. It is at that time and of course after a great deal of expense that it all really hits the fan. For example, we had a client call us because she received a cease & desist letter literally three days before she was to appear on the Today Show to promote her new product. She was of course infringing. I had another client that relied on a very popular non-lawyer website for his trademark and while he thought they were actually conducting a thorough search, they only conducted a quickie knock-out search. As a result, he went ahead and retooled his equipment to manufacture about 250K dollars worth of glass containers all embossed with what he realized was an infringing trademark so that he could not legally sell any of his product in the US. If you plan on relying and investing in your brand, do not take this part lightly.
It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Your trademark will be one of your company's most valuable assets. As such you should take care to have it registered correctly without losing valuable rights. An application for trademark registration is not a DIY project. I suggest strongly that you raise the required funds to have it done correctly, by having an experienced Trademark Attorney clear your mark for use and registration first, and then file and prosecute your application. If you skip a step you could lose rights or worse, you may be sued for infringement just when your company is becoming profitable.
For more detailed advice, I recommend that you contact an experienced Trademark attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
The DIY method can be done, but you should be comfortable with the fact that you are taking a risk. A trademark application looks simple, it asks you what you are trying to register and to describe the goods, etc. However, there are a number of pitfalls that are not at all obvious. Just know that if you are going to save money on this, you are going to spend a lot of time. Also note that many solo attorneys offer trademark applications pretty inexpensively, and it may save you money in the long run since it will be done once and done right. If you are determined to DIY, follow these steps:
1) EXTENSIVELY (
Years licensed, work experience, educationLegal community recognition
Peer endorsements, associations, awardsLegal thought leadership
Publications, speaking engagementsDiscipline