Intellectual property can be a confusing area of law. Here are some of the questions that I get most frequently, and some answers to help get you on the right path.
I’m not sure if what I want is a trademark, copyright, or patent. What are the differences, and which one(s) do I need?
The media often uses these terms interchangeably, which is incorrect. In fact, these are distinct areas of law that (along with the lesser-known “trade secrets”) make up the field commonly referred to as “intellectual property.” Trademarks are things like words, logos, and slogans that are used in connection with products or services in order to create a brand. Copyrights give protection to artistic works such as books, music, movies and television, and artwork. And patents give exclusive rights to make, use, and sell inventions for a limited time, in exchange for public disclosure of the invention.
All businesses have a trademark, and in many cases they have more than one. But if they have not done a trademark search or applied to register their trademark, they may be infringing and/or vulnerable to infringement by others. If you are an artist then whether you write, paint, sculpt, play, record, or otherwise, you will no doubt own some copyrights. But did you know that you cannot sue for copyright infringement if you do not have a copyright registration? Finally, if you want to see if your invention can protected from others, you need to work with a patent attorney in order to obtain a patent registration. Disclaimer: I am not a patent attorney, and while I would be happy to assist you with your trademark or copyright matters, I cannot assist you with your patent matter.
Do I need to trademark my name/logo/slogan?
There is a common misconception that a business must “trademark” its name before it can provide products and/or services under that name. That is incorrect for multiple reasons. The word “trademark” is commonly used as a verb to mean “register a trademark” with the U.S. Patent & Trademark Office (in the United States). But you can acquire some limited rights (called “common law” rights) to a trademark just by using it. Federal registration is not a requirement to use a trademark. In a few cases, it might not even make sense to register a trademark.
The best business practice is to always (at the very least) conduct a trademark search before adopting and attempting to register a new name. This can help you to avoid infringing upon someone else’s trademark rights, and to keep you from wasting money on a trademark application that does not have much chance of success.
How much does a trademark cost?
The short answer is that in most cases, using my services, the total cost for trademark registration is between $1,000 and $1,500. But like with most all legal questions, the longer answer is “it depends.”
The goal of my flat-fee pricing model is to put you in the driver’s seat. Many of the additional costs are optional and at the discretion of the client. I will explain your options to help you make the best decision for you. Also, I work to make sure that you don’t pay any additional fees (whether government filing fees or legal fees) before it is necessary.
For example, if you sell different types of products and services, you may need to pay additional fees to add those classes of products and services to your application. Some trademark attorneys make you pay these additional fees at the beginning of the process when you file your application. However, you don’t have to pay the additional fees to the Trademark Office up front. And what’s worse is that if your application receives a major rejection, you might just be out that additional money that you didn’t have to pay in the first place.
I perform trademark searches because I want to help prevent my clients from wasting their money on applications that have no chance of success. I don’t take unnecessary risks with their money because I understand how the trademark registration process works. And I encourage small businesses to invest in their brands because I know that the brand is the most valuable asset that a business will ever own.
How long does it take to register a trademark?
I will be blunt: the process of trademark registration takes a long time. However, there is some very good news: once you receive your trademark registration, your rights date back to the date the application was filed. So even if the process takes two years, you will still get the benefit of your application filing date.
If you are already using your trademark, then assuming the Trademark Office does not have any major issues with your application, it generally takes about 8-10 months to get your registration. If you are not using your trademark, then you would be filing on an “intent to use” basis. In that case, it typically takes about a year to get your registration. However, you will not get your registration until you put your mark into use. You can keep your application alive for several years until you are able to make use, though.
Do I need to hire a trademark attorney located in my area?
If you are just wanting to conduct a trademark search and/or file a trademark application, then no. That is because trademarks are governed under federal law (although states also have their own trademark statutes). It may often be advantageous for you to hire a trademark attorney in another area. For example, businesses located in New York may not wish to pay the going rate for trademark services in their city. However, if you need to file (or defend) a trademark infringement lawsuit, you will need to hire someone that can practice law in the relevant jurisdiction.
I am located in Phoenix, but I have worked with clients on both coasts and between. In fact, I have represented clients in Canada, Mexico, the UK, Russia, and Latvia. One thing I love about what I do is that it allows me to work with businesses from all over!
Why should I work with a trademark attorney?
There is a lot of information out there about performing legal services. The Trademark Office, for example, provides a lot of helpful information about preparing and filing your own trademark application on its website: USPTO.gov. However, it also has a page dedicated to why and how you should find a trademark attorney to assist you.
While you can file your own trademark application, there are several reasons as to why it is not a good idea. If you imagine the application process as a race, then businesses that file their own applications view getting their trademark registration as the finish line. But an experienced trademark attorney knows that is not the case. Our finish line is getting you a trademark registration that will stand up to legal challenge, not just getting the registration.
I see this all of the time in my trademark searches for clients. There is a registration for a similar mark standing in my client’s way, but the application was filed without an attorney. Because of my knowledge of trademark law and experience with the application process, I see glaring errors or issues that make the registration subject to challenge. What was the point, then? If you have a registration that cannot stand up to legal challenge, you might as well have saved yourself the government filing fee and not filed at all.
Of course, getting the registration alone is not always the easiest task. A trademark attorney will help you through the process. They will keep you updated about any upcoming deadlines. They will help to translate the legalese you may receive from the Trademark Office, so that you can make informed decisions about your application. And they can also represent you if you do run into legal problems regarding your trademarks.
Why shouldn’t I hire a document preparation service, such as LegalZoom?
There is no shortage of criticisms on this website about quasi-legal services that you can purchase from companies like LegalZoom, Trademarkia, and Trademark Engine. The number of companies like these grows on what seems like a daily basis. As do the complaints about these companies. Of course I am biased against them, because they are competitors. But if you question my credibility on the subject, here is what I would say to you: I honestly and truly believe that a business is better off handling its own trademark matters than using one of these companies.
Why do I say that? Because the services provided by these companies do not add value versus what you can do yourself. They cannot give legal opinions, so their searches give you hundreds or thousands of potential conflicts to sift through, instead of the 1-2 page opinion that I provide. They give you an online form to fill out, which is used to input data into your trademark application. Or you can just go to the application form on USPTO.gov and fill in the same information directly by yourself.
Yes, these websites offer the promise of service at low prices. But how much are you willing to pay for something that provides you with no value? For something that doesn’t put you in a better position, or give you a better chance to succeed? I hope that you decide to hire a trademark attorney to help you, and see it as an investment in your brand. But if not, please just don’t spend money on something that isn’t going to help you.