Corporate Trademark Registration
August 25, 2011 7:11 PM Subscribe
How difficult is it to register a corporate name for trademark purposes? We are just reviewing the Government USPTO "trademark electronic application system" TEAS and they recommend hiring an attorney to assist.
Is this necessary or is it really possible for a common person like myself to navigate through this whole process. I am really leary about hiring a Lawyer as I have had a bad experience in another situation for a patent where I was charged lots (more than 5k of money for forms and little real contribution).
I am a trademark attorney, but I'm not your trademark attorney. It is possible to do the PTO application on your own - the PTO has added enough information to make it relatively user friendly. That being said, should you get a substantive refusal (like likelihood of confusion or a descriptiveness refusal) you might be in over your head. The good news is that you have six months to respond and that's enough time to find good trademark counsel! Trademark counsel usually does not cost as much as patent counsel because the details just aren't there. But, it also depends on who you get and what they charge.
I've had clients who have successfully navigated the PTO process on their own, but I've also had a lot who have just hit the wall.
I'm not speaking as a trademark attorney, but in the long run, you will probably be well served to have one help you.
posted by Leezie at 7:19 PM on August 25, 2011
I've had clients who have successfully navigated the PTO process on their own, but I've also had a lot who have just hit the wall.
I'm not speaking as a trademark attorney, but in the long run, you will probably be well served to have one help you.
posted by Leezie at 7:19 PM on August 25, 2011
Best answer: I am an IP attorney, but I am not your IP attorney. This is not legal advice.
I generally concur with Leezie, however, I strongly recommend consulting with an attorney—if only a free initial consultation—because what you are trying to do (trademarking the name of a business) may or may not actually be possible in your case.
Also, if you are wary about costs (and who wouldn't be?) then if you consult an attorney you should inquire about a fixed fee arrangement. This could be a single fee to cover the entire application, or it could be a fee for the application, a fee for responding to a refusal, etc. This will give you a much better sense of what the costs will be like.
Bear in mind that whether you hire an attorney or not there will be Trademark Office fees, which can be substantial.
posted by jedicus at 7:29 PM on August 25, 2011
I generally concur with Leezie, however, I strongly recommend consulting with an attorney—if only a free initial consultation—because what you are trying to do (trademarking the name of a business) may or may not actually be possible in your case.
Also, if you are wary about costs (and who wouldn't be?) then if you consult an attorney you should inquire about a fixed fee arrangement. This could be a single fee to cover the entire application, or it could be a fee for the application, a fee for responding to a refusal, etc. This will give you a much better sense of what the costs will be like.
Bear in mind that whether you hire an attorney or not there will be Trademark Office fees, which can be substantial.
posted by jedicus at 7:29 PM on August 25, 2011
I am not an attorney, but I just met with one today regarding trademarking our company name.
I agree with the commenters that a good attorney is worth their fees. I am sorry you had a bad experience with your patent. Was the attorney a patent attorney? Did they have a background in the technology your were patenting? I mention this because sometimes people have a friend that is an attorney and do legal work for them, but are not trained in that particular field of law. It is essential you work with an attorney who has specialized in that specific area of the law.
For what it is worth - We did not hire an attorney to file our business in our state. I read up on the filing requirements for our state and did it ourselves.
However, we did hire attorneys for our wills, trust, durable power of attorney, medical power of attorney and advanced directive. My point - I agree that a good attorney is worth the money. In the case of a trademark you should pay someone for this - fixed fee is best.
posted by BuffaloChickenWing at 7:40 PM on August 25, 2011
I agree with the commenters that a good attorney is worth their fees. I am sorry you had a bad experience with your patent. Was the attorney a patent attorney? Did they have a background in the technology your were patenting? I mention this because sometimes people have a friend that is an attorney and do legal work for them, but are not trained in that particular field of law. It is essential you work with an attorney who has specialized in that specific area of the law.
For what it is worth - We did not hire an attorney to file our business in our state. I read up on the filing requirements for our state and did it ourselves.
However, we did hire attorneys for our wills, trust, durable power of attorney, medical power of attorney and advanced directive. My point - I agree that a good attorney is worth the money. In the case of a trademark you should pay someone for this - fixed fee is best.
posted by BuffaloChickenWing at 7:40 PM on August 25, 2011
i'm an idiot who did our trademarking on my own! i will never do it again. hire a lawyer, go fixed rate. the common numbers i hear bandied around chicago are from $500-$1500.
posted by patricking at 8:02 PM on August 25, 2011
posted by patricking at 8:02 PM on August 25, 2011
I'm an IP attorney and most of my work is focused on trademark prosecution and TTAB appeals. This is not legal advice and I am not your attorney.
You should at least talk to an attorney for a free consult to get a better idea of what you'd need. A lot of my clients are people who filed on their own and ran into a snag. Can you file it on your own? Sure! But if you run into any problems, you may need help. It can be a lot easier to just have someone do it correctly from the beginning.
For an idea of costs, my firm charges a flat fee for TM filings. It's $750 per application + PTO filing fees per classification of goods/services. If you file an ITU application, it's $100 to file the statement of use. Most firms in my local area charge around the same. It should be really easy to find someone to quote you a flat rate for a simple filing.
Responses to office actions are normally billed hourly.
The flat fee includes an initial trademark search which lets you know of potential problems before you actually spend the filing fees, and the filing of the application.
If you provide your location, I can give you some recommendations if I know anyone if your area.
posted by Arbac at 8:07 PM on August 25, 2011
You should at least talk to an attorney for a free consult to get a better idea of what you'd need. A lot of my clients are people who filed on their own and ran into a snag. Can you file it on your own? Sure! But if you run into any problems, you may need help. It can be a lot easier to just have someone do it correctly from the beginning.
For an idea of costs, my firm charges a flat fee for TM filings. It's $750 per application + PTO filing fees per classification of goods/services. If you file an ITU application, it's $100 to file the statement of use. Most firms in my local area charge around the same. It should be really easy to find someone to quote you a flat rate for a simple filing.
Responses to office actions are normally billed hourly.
The flat fee includes an initial trademark search which lets you know of potential problems before you actually spend the filing fees, and the filing of the application.
If you provide your location, I can give you some recommendations if I know anyone if your area.
posted by Arbac at 8:07 PM on August 25, 2011
I meant to include this in my previous post. Here's a great post from Ron Coleman of the Likelihood of Confusion blog about filing a trademark yourself.
Summary - he doesn't recommend it.
posted by Arbac at 8:16 PM on August 25, 2011
Summary - he doesn't recommend it.
posted by Arbac at 8:16 PM on August 25, 2011
Google this guy... Erik Pelton. I used him, got what I paid for and some good advice and solid follow up after his service was complete. I would have to say, after trying to do it myself, it was money well spent.
posted by bkeene12 at 8:24 PM on August 25, 2011
posted by bkeene12 at 8:24 PM on August 25, 2011
IAAL, IANYL, TINLA.
It's not hard, but if I had a nickel for every client who did it himself and ended up in my office to do it again, I'd have a fistful of nickels.
If you have reasonably good cause to be filing a trademark application in the first place, then legal fees shouldn't be high on your list of concerns. IME, the big firms will usually gouge you, and the "we'll help you do it yourself" guys always will, but it's still down in the noise on a project that actually needs a trademark registered.
OTOH, if you don't expect to be making much money, and you're not ripping somebody off, you could just start using the name for whatever you're doing. If somebody hassles you later, use the money you saved by foregoing the trademark application to spank them.
(Don't worry, they deserve it, and they won't be secretly enjoying it, either.)
posted by spacewrench at 8:31 PM on August 25, 2011
It's not hard, but if I had a nickel for every client who did it himself and ended up in my office to do it again, I'd have a fistful of nickels.
If you have reasonably good cause to be filing a trademark application in the first place, then legal fees shouldn't be high on your list of concerns. IME, the big firms will usually gouge you, and the "we'll help you do it yourself" guys always will, but it's still down in the noise on a project that actually needs a trademark registered.
OTOH, if you don't expect to be making much money, and you're not ripping somebody off, you could just start using the name for whatever you're doing. If somebody hassles you later, use the money you saved by foregoing the trademark application to spank them.
(Don't worry, they deserve it, and they won't be secretly enjoying it, either.)
posted by spacewrench at 8:31 PM on August 25, 2011
One piece of anecdata-- I did it myself (IANAL but my ex was a patent lawyer and I absorbed stuff). The PTO had questions but the rep was incredibly helpful and coached me a little. It was easy to resolve and the process was painless.
posted by carmicha at 6:11 AM on August 26, 2011
posted by carmicha at 6:11 AM on August 26, 2011
This thread is closed to new comments.
posted by michaelh at 7:18 PM on August 25, 2011