1(630)802-8605 Ravi.das@bn-inc.net

Well. At long last, after a two year slug, my trademark finally got registered with the USPTO yesterday.  Now officially, I can use the ®!!  Woohoo!  Truth be told, I am also a startup company, and many businesses like me often question is it worth it file a trademark?  In today’s blog, I wanted to share some of my experiences.

First, what exactly is a trademark? The USPTO defines it as follows:  “A mark which includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”

A trademark is often associated with a product, and a servicemark is often associated with a service.  In my case, my trademark is for a service, which is an electronic newsletter service that I provide to subscribers.  Theoretically, yes, you do want to file a trademark or servicemark if you come up with a new idea, a new product, or a new service.

After all, you don’t want somebody else stealing your ideas right?  By having a servicemark or a trademark, you have complete legal rights to what you are protecting, and can take an entity to court and take legal action if they steal your ideas.  Really, in some cases, you may even want to file for a patent, but this is a very complex and costly process-something I know that I will never attempt!!!

You can file for a trademark or service at the state or federal level.  If you file at the federal, you get nationwide protection, but if you file at the state, you only protection in that state only.  But irregardless, you can always start using the TM or the SM by your product or service without even having to file anything.  It just shows to everybody that you are claiming the legal rights to it.

Now, back to my original question.  Is it worth it?  Well, it depends.  I will be honest.  My experience with the USPTO was an emotionally draining one, and I faced two rejections.  Luckily, I had a good attorney at my side, and saw my application through every step of the process.

And, it is also a very LONG haul.  Don’t expect to file it and have an approved application the next day.  When you first file, it takes at LEAST 4 months for an examiner to even look at your application.  And more time will be spent if you get Office Actions, etc.  You can see this entire process on the USPTO website in very good detail.  The average wait to see your application through is roughly 1-1.5 years, or even longer, such as was my case.

So, if you are truly passionate about your product or service (like I am for my newsletter), then yes, go ahead and start the application process.  But, just be extremely patient of the timeframes.  After all, we are talking about the Federal Government here.

But, if you don’t have much patience, you can always start using the TM and the SM symbols, and file at the state level first, and see how things go with that.  The filing fees aren’t bad for the USPTO, it is about $325.00.  And filing at the state level is even cheaper, anywhere from $10.00-$50.00.

Remember, here in the United States, we are fortunate to have good copyright laws.  So even if you just use the TM and SM symbols, you can still get a reasonable amount of protection in a court of law.

Now, the next question that often gets asked, is if you need to hire an attorney to help you with the process.  Technically no, you do not.  The USPTO does not require it, and you can file everything on your own.  But be advised.  If you don’t know what you are doing, the application form can be quite confusing as well as the entire process, especially when it comes time to responding to office actions.  Therefore, it is always best to have an attorney at your side, and let them handle all the work.  After all, they are trained in every aspect in this regard, and know how to fill out and respond to everything.  Best yet, they also know how to deal with the examining attorney at the USPTO, and how to engage them in a conversation to get the answers that you need.

The cost for a lawyer?  Mine was about $1,300.00.  Was it worth it?  Yes, every penny was.  Most lawyers will typically charge a flat fee, excluding the filing fee costs.  Then, depending upon what is needed next, he or she may then charge an hourly fee, ranging from $150.00-$400.00.  Remember most trademark attorneys are cognizant of the fact that you are a startup, and have a very limited budget.

But, keep in mind, never OVER spend on an attorney.  It shouldn’t have to cost anymore than $800.00-$1,500.00.

Now, the next question is, do I use Legal Zoom instead?  You could, but this is called “DIY” (for Do It Yourself) Law.  To file a trademark or servicemark with them, it costs about $500.00.  But, keep in mind that they only file the paperwork for your, and they do not any form of legal advice, or help you respond to office actions.

My next steps now?  For now, I am just savoring my victory.  It will be a LONG time until I file another application, if I ever even need to.  But, I plan to file two applications at the state level.  Hope this blog helps, and if you have any questions, please contact me.  We get back to posting about security stuff tomorrow.