united-states, legal, intellectual-property, trademark, lawyerThere are a few questions about trademarks, and the answers seem to indicate that it is best to hire an attorney.
The US Trademarks web site seems to offer specific forms with instructions, and - at least in theory - it seems that it should be possible for a college educated person (who was able to successfully fill all the necessary immigration forms to sponsor a spouse without legal help) to figure it out.
Is it just that it’s very complicated and it takes time to learn? Or are there steps that only a lawyer can do?
My startup will take some time to bring in any money, so I’m trying to limit expenses.
You can limit expenses very nicely by searching yourself for competing uses of your intended name, then appending the unregistered trademark symbol, e.g. MyCoolProduct™.
There are very few situations in the early stages where the best use of your cash is a host of trademarks, registered designs and the like. Typically, these afford protections that just aren't relevant to you at an early stage. When you close series A and are wondering how to spend all that money going to scale, the protections become relevant and affordable.
The only protection most startups need is that of a well-executed proposition coupled to skilled, determined and creative execution. Without that, you're spraying pesticide before you bought seed.
As others have noted, there’s certainly nothing in place to stop you from registering a trademark on your own, without an attorney. Filing for a single class costs something between $375 and $500-something, if I recall correctly. However, there are many nuances in trademark filings that can be confusing and could lead to an improper protection. You have to perform a search for trademarks, and you have to write a fully-functioning description (if this is an image, at least) that other people can then search. Clearly, you’re capable of doing both of those things, but it’s much better if you have a good idea of what you’re doing.
In general, speaking about IP, I would suggest something along these lines:
You can read through descriptions on the USPTO site, and that might be a good idea before you make any decisions. Just get a feel for what “goes” on them, and that will tell you whether you feel comfortable doing it yourself.
On top of all that, remember that registering a trademark isn’t necessary in many cases. You automatically get a trademark as soon as you start using a name in commerce, so unless you’re really concerned about other people stealing your name or logo (and I don’t mean to say you shouldn’t be, I’m just reminding that you may not have to be), it may or may not be worth waiting until finances are a bit more steady. It’s a business decision, and is certainly not necessary to get going.
It might be worth doing an initial consultation with an IP attorney, just to go over a bit of what you’re doing and decide whether one is worth it, and more relevantly, whether it would be better to get an attorney to do it. Take what they say with a grain of salt, obviously, but they’ll probably lend good advice, and initial consults are generally either free, or less than twenty or thirty dollars. Definitely worth it for something like this, I would say.
You can file it yourself for about 375 using the USPTO.gov website, but trademarks are quite complex items. Its almost worth the trouble of talking to an attorney who specializes in trademarks. But you don’t necessarily need one right away. Get some money coming in first. My recommendation.
You can do it yourself, but, as others have pointed out, it’s complex. That’s why people often hire attorneys.
There are lots of pitfalls for the unwary and uninformed. Some could simply result in your application being denied. Some, however, could result in you losing a legal challenge down the road with the result that you are no longer allowed to use your own business’s name or marks. In a lawsuit, you might even be forced to pay damages for infringing someone else’s mark. For example, if your mark is “Joe’s Biscuits,” but it turns out there is somebody out there using the trademark “Joseph’s Biscuits” and you operate in the same geographical region, one of you may be in for a world of hurt.
Best advice: pay the extra money for legal assistance. I know the cost seems daunting when first starting a business (and I’m in a similar position), but there’s a reason for the costs: you are paying for piece of mind and greater safety.
Disclaimer: This is not legal advice.
I am not a lawyer, nor am I any way associated with Legal Zoom, however if you want some legal assistance with the US Trade Mark process, they do offer a Trade Mark service that might be a decent and reasonably cheap compromise
DISCLAIMER: I'm not a lawyer, and this isn't legal advice.
The recommendations to contact a lawyer are well-advised. Also well-advised is the advice that trademark may not be the first issue to worry about.
That said, one thing that doesn't seem to be mentioned is the (albeit complicated) notion of non-registered / common-law trademark rights that can be established. Again - an attorney should be talked to. The only reason I bring it up is that it is more information that may help readers in a similar situation make a descision on whether they are comfortable waiting to bring in income before making the plunge to hire an attorney and register their trademark(s) / service mark(s).
From the USPTO:
You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, ...
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Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark ...
From a summary by BitLaw:
Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark. However, federal registration, if available, is almost always recommended and gives a trademark owner substantial additional rights not available under common law.
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Common law trademark rights are limited to the geographic area in which the mark is used.
From prominent IP (intellectual property = patents, trademarks, copyright, trade secrets, etc) attorneys Fish and Richardson:
Unlike many countries, the United States confers trademark rights by use of the mark. At the outset, trademark “registration” is little more than a formal acknowledgement of rights already in existence.
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While owning a trademark registration provides many significant benefits, registration by itself does not conclusively establish the owner’s exclusive right to use the mark. Prior users have significant protection under the Trademark Act, and those rights should not be overlooked in any trademark dispute.
And from the slightly less universally respected LegalZoom:
Federal registration is not required to establish trademark rights. "Common law" rights arise from the actual use of a trademark without federal registration. Generally, whoever first uses a trademark in commerce has the ultimate right to use that trademark in that way. However, there are many benefits of federal trademark registration.
Hope this helps somebody as they plan their strategy!
I agree with everyone else who says you should hire an attorney to file your patent. However, I don’t think hiring an attorney is such a black-and-white question. I feel like people too-often treat lawyers as full-service legal providers and then hire less qualified attorneys because they can’t afford all the full-service hours of lawyers with tons of experience.
Instead of treating this as all-or-nothing, go on the USPTO website, learn all you can, get the paper forms, fill them out, get everything else ready, maybe even grab a book on trademarks, and then go hire a great attorney to look it over what you’ve produced.
Attorneys bill a lot of hours educating you, asking basic questions, other nonsense that isn’t worth hundreds (or thousands) per hour. When you go speak to your lawyer, go as a relative expert. Take the savings and hire a better attorney to get the best possible outcome.
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