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Trademark registration in the US. To DIY or not to DIY? That is the question.

Most of sellers understand the importance of having a trademark officially registered - it gives an opportunity to get an Amazon Brand Registry, to close your listings from hijacking, license third parties, block competitors etc.

USPTO has consolidated all rules, requirements and regulations that may be applicable to the process of trademark registration in its TMEP - Trademark Manual of Examining Attorney. It takes weeks, months and even years to learn all of the requirements and rules by which examining attorneys are driven when deciding whether the trademark is eligible to be granted. TMEP is usually updated every year, but even such frequency is not enough to describe some small changes or codify tendencies observed in different office actions.

Intellectual Property law is one of the most dynamically evolving and one of the most subjective fields of law. The decision on granting or refusing to grant protection for the trademark depends on the examining attorney (hereinafter - EA) almost solely. Some substantive merits of the case may lead EA to the decision of refusal even if in general there were no prerequisites for such refusal.

In addition, there are a lot of different requirements that the trademark has to meet in order to be registered - it has to be unique; it has to be not offensive (in any language, not only in English); it should not describe the product or its features; it should not mislead the customer in regard of the source of the product (which is a whole another universe of requirements) etc.

All these requirements are known by any professional intellectual property lawyer, but many people think that they can handle the process of registration and save few bucks. Is this true? What can you actually save on and what should you pay for in either case?

The core of any trademark registration process is a comprehensive trademark search. What means «comprehensive»? It is not just a word for adding more seriousness to the name of a service in law firms. Comprehensive means that your mark will be analyzed according to all requirements - it takes into account not only direct matches of trademarks (hello LegalZoom, Trademarkia and others), but also visual, aural and semantic similarity, distinctiveness of the mark, how misleading it is, are there any similar marks registered for goods from other ICGS classes, but which are homogeneous according to «one shelf» doctrine etc.?

We would never recommend you conducting a trademark search solely or ordering this service on freelance platforms, since the prospects of success of your registration process directly depends on the level of lawyer’s professionalism and the quality of the search.

Trademark application itself is not so complicated for a professional and can be done relatively fast if the client has provided all needed information. USPTO trademark application web interface is sometimes confusing for a person, who didn’t use it before, but with some amount of time, knowledge and patience it is likely to succeed with filing the trademark online by yourself. You should pay attention to a list of requirements, such as confirmation of use, size of a picture uploaded, the form in which you register your mark etc. In our next posts I will describe the most common mistakes of non-professionals while registering trademarks.

As a conclusion, if you have $700-800 the best option, of course, is contacting professional lawyers to take care of your registration process. But if your budget is really limited - order a professional trademark search and then based on its results and lawyer’s recommendations very carefully draft your application and file it online. Do not save money on professional advice, since usually such savings lead to refusals and lost money (on official fees).


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