A new client came in last week. He had filed a trademark application through one of many of the online services that emphasize that they are not law firms and charge accordingly. This client has developed a brand name for his professional services, but his employer will not allow him to use the brand name unless he has a registered trademark. The Trademark Office initially refused the application on the grounds that it was confusingly similar to another registration and that it had other defects that prevented registration. According to the client, his online trademark service told him (1) the refusal could not be overcome, and (2) even submitting arguments to the Trademark Office would be too expensive.
After we were retained, it took less than ten minutes to discover that the trademark registration that had been cited as confusingly similar had been cancelled and thus no longer was an impediment to the client’s application. Further research unveiled multiple registrations with the same purported defect that the Trademark Office cited against our client, a defect that could be overcome through a combination of this evidence and a carefully constructed argument. The client was able to obtain a trademark registration and is using his brand to promote his business.
When you use an online trademark filing service, a non-lawyer typically handles the research and preparing the application, allowing the service to charge a lower fee than law firm prices. In our experience, however, these services often conduct incomplete research, make errors in the application or omit certain items that either prevent a registration or result in a trademark registration that does not cover goods or services that are essential to the client’s business. Frequently our fees to fix these applications exceed the flat fees our firm charges to file the initial applications. When choosing an online service or an attorney to search for and file a trademark application, please keep in mind that value and cost are not synonymous. In the end, you will get what you pay for.
