I'd like to register a U.S. servicemark on my own. There doesn't seem to be any clear instructions on the USPTO website. I'd like to learn more about "ensuring the mark is registrable" and filing a trademark application via TEAS Plus. I have a name and a logo, and I believe the class for each is Class 35. I've been using the name for five years. The new logo for only a year or two.

The only reason to spend the money for the registration is so that you can enforce it if you eventually need to. It might be enforcing it through C&D letters, or it might require you to go to court.


Lawyer time up front is very cheap. Doing it right is easy with help.

Lawyer time trying to defend your registration in court will be much more money. Fighting an expensive fight and then losing because you did something wrong is an expensive lesson to learn.

Spend the money up front.

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Original post by frob Lawyer time up front is very cheap. Doing it right is easy with help. Lawyer time trying to defend your registration in court will be much more money. Fighting an expensive fight and then losing because you did something wrong is an expensive lesson to learn. Spend the money up front.

There's nothing that a lawyer does that can't be learned. Moreover, I believe the subject of my post was a question regarding trademark registration without an attorney.

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Original post by Adraeus There's nothing that a lawyer does that can't be learned. Moreover, I believe the subject of my post was a question regarding trademark registration without an attorney.

That is true, it can be learned.

It takes roughly two additional years of graduate-level law school.

IP law is *the* most complex area of law. Lawyers who take the PTO exam have to understand local, national, interstate, and global variance in the law.

Many attorneys avoid that area of the law because of the complexity and liability.

I'm just reiterating that rather than learning the stupidities incorporated into IP law, (and there are a lot of stupid nuances to it), you will save yourself a lot of time and effort by finding a lawyer who has passed the PTO Bar Exam.



If you are really that adamant about going without an attorney, you should at the very least spend the money on the appropriate Nolo press books. Those would include at a minimum, "Trademark: Legal Care for Your Business & Product Name" and "Patent, Copyright & Trademark" that contain a lot of information, such has how to file and how to do a legally acceptable trademark search. After performing a comprehensive search (which will cost a bit of money or many hours on your own time to have it performed properly) you file the forms electronically with a $350 (I believe) fee. You will need to include proper affidavits of the results of your search and assorted business facts, and also submit descriptions, samples, and other information about your mark. You will also need to provide documentation that you have used the mark in trade in multiple states. Note that if you haven't filed your business taxes saying that you have engaged in trade in multiple states, you will probably be flagged for a tax audit. If they don't approve your mark the first time through, you'll need to spend even more money to get things fixed.



Then, assuming you ever want to enforce your mark, you'll have to make friends with a lawyer, but you can do that at a later time and hope they'll accept you as a new client and enforce your mark even through they weren't involved in the earlier searches or filing. Good luck on that one.

[Edited by - frob on July 22, 2007 9:14:11 PM]

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Original post by Adraeus

There's nothing that a lawyer does that can't be learned. Moreover, I believe the subject of my post was a question regarding trademark registration without an attorney.
Ditto an accountant, an artist, audio person, marketing, web development (both back end programming and front of house design), etc. Of course while you are busy learning everyone else's jobs (and not doing them as well as they do) you won't be doing your own job.

Golden rule #1 in indie dev is to do what you are good at and outsource the rest. The more specialist the skill the more specialised the skill the greater the chance that you will make a mistake and the more damaging that mistake will be. IP/Legal is about the most specialised and most damaging if done wrong. If you release a game with a bug you can patch it. If you mess up on a trademark application or a contract the damage will last for years.

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Original post by Adraeus Quote: Original post by frob Lawyer time up front is very cheap. Doing it right is easy with help. Lawyer time trying to defend your registration in court will be much more money. Fighting an expensive fight and then losing because you did something wrong is an expensive lesson to learn. Spend the money up front. There's nothing that a lawyer does that can't be learned. Moreover, I believe the subject of my post was a question regarding trademark registration without an attorney.

Your two posts contradict each other. If, as you say, there's nothing a lawyer can do that you can't learn, then how come you can't follow the instructions on the USPTO site? I had originally read them, and they are quite specific about what to do and how to file.

You can most certainly file without using a lawyer. Take a few weeks, grab some books from the library and do heavy research. Then, you need to do some searches. Do a light one on Google, since that will show any heavily active trademarks that might conflict with yours and if anyone is camping what you might have wanted as a .COM address. After that, go back to the USPTO and spend the money for the comprehensive search of the US database (possibly Canada, if you want to do business in both countries). You must be 100% correct in that there will be no trouble. For example, we'd thought up 'Dueling Sprites' for a name, but then found out that Coca-Cola Corp was suing a very small Hawaiian company named Sprite Entertainment, and decided to not chance it. Coke has way more money than we do, and we can't afford to go to court.

Even though I understood what I was supposed to do, I paid the lawyer the extra $300 to do it, just to make sure every i was dotted and t was crossed. Too much at stake for us.

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Original psot by Obscure If you mess up on a trademark application ... the damage will last for years.

Define "mess up." We're talking trademarks, not patents. What could possibly go wrong? What should I look out for? In which areas should I be cautious and careful? After going through the application until I reached the payment section, the application process seemed pretty straightforward.

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Original post by ellis1138 ... then how come you can't follow the instructions on the USPTO site? I had originally read them, and they are quite specific about what to do and how to file.

I found that out after posting this thread, after realizing that I wasn't going to get an answer to my question without a lecture about why I shouldn't proceed without an attorney. I've already decided to proceed without an attorney. Now I just need to find out the best way to go down that road.

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Original post by ellis1138 Even though I understood what I was supposed to do, I paid the lawyer the extra $300 to do it, just to make sure every i was dotted and t was crossed. Too much at stake for us.

Only US$300? The quotes I've seen from trademark attorneys have ranged between $3,000 and $5,000, and I'm sorry to say, but their time in this regard isn't worth that much.

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Original post by Adraeus Quote: Original psot by Obscure If you mess up on a trademark application ... the damage will last for years. Define "mess up." We're talking trademarks, not patents. What could possibly go wrong? What should I look out for? In which areas should I be cautious and careful? After going through the application until I reached the payment section, the application process seemed pretty straightforward.

Lots of things could possibly go wrong. The most painful is that you fail to perform a proper search before registering your mark and get sued into oblivion by a major corporation who is defending the mark that you improperly infringed on.

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Original post by Adraeus Quote: Original post by ellis1138 ... then how come you can't follow the instructions on the USPTO site? I had originally read them, and they are quite specific about what to do and how to file. I found that out after posting this thread, after realizing that I wasn't going to get an answer to my question without a lecture about why I shouldn't proceed without an attorney. I've already decided to proceed without an attorney. Now I just need to find out the best way to go down that road.

Since that is your decision, I suggest (and suggested earlier) that you obtain and read several books on trademark registration available through nolo press.

The thing you must be absolutely careful on for DIY trademark searches and DIY legal is that you don't miss anything.

Even if you don't think they are close enough to confuse, you instantly become a target for any company that thinks they might be conceivably confused or that they might get a buck from you. Ellis1138 pointed out a great example of the kind of caution you need to use in trademarks. In order to keep your mark, you must constantly defend it. In order for more established and wealthy companies to keep their marks, they hire people to review new applications (like yours) and shut them down if there is even a tiny resemblance.

Next, even if you do everything else right, a bad search or improper affidavits could mean that you face an expensive legal situation down the road. You might not be noticed by other until you have established your own brand, but at that point it would be very expensive for you to either defend the mark or to change it. As you grow, you become a bigger target for the predators who seem to only exist to leech money out of honest businesses who make legal mistakes. Neither situation is good.

Since you have made the decision to try to save a few bucks now, you should be extra cautious in regards to your searches and filings to ensure your frugality doesn't accidentally bankrupt you five years from now.

The other thing I would beware of, as I mentioned above, is that you will need documentation of interstate commerce. The IRS has open communications with the USPTO and other offices, and they can (and will) ensure you are collecting and paying taxes properly. This is also documented in the relevant nolo press books.

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Original post by Adraeus Quote: Original post by ellis1138 Even though I understood what I was supposed to do, I paid the lawyer the extra $300 to do it, just to make sure every i was dotted and t was crossed. Too much at stake for us. Only US$300? The quotes I've seen from trademark attorneys have ranged between $3,000 and $5,000, and I'm sorry to say, but their time in this regard isn't worth that much.

Get some details on what they will do for that money, not just a general quote. That price range probably included the filing fees, the time and effort involved in a trademark search, and effort working with you on preparing all the documents. But it might not. The lawyers I work with are generally $150/hr, with my game industry IP specialist running a bit more than that.

Ellis' post clearly stated that he (1) Read all the material from the USPTO site and learned what he needed, (2) Did a preliminary search himself then paid for a professional search, (3) collected every scrap of materials, and finally (4) took the completed bundle to a lawyer to help (5) register the mark.

The $300 was step 4. Step (1) took a lot of time, (2) took time and more money, and step (5) took a bit more money. I'm guessing that if he were to pay himself his normal wage, the cost of all those steps was in the $3K to $5K range as well.

The "how to file" page: http://www.uspto.gov/web/offices/tac/doc/basic/index.html

The fees the USPTO charges: http://www.uspto.gov/web/offices/ac/qs/ope/fee2007february01.htm#tm

The search collections are here: http://www.uspto.gov/main/search.html

They do have online help. But you'll pretty much have to do the search yourself on the following site:
http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4s49po.1.1

A great, free, online resource is Nolo.com

http://www.nolo.com/article.cfm/ObjectID/79BB0841-5898-40C3-A441E98A7494A853/catID/D8932879-DC34-43DF-BF65FC92D55FEE5D/310/274/FAQ/

Read that article through, expecially the last page. It also has a lot of links to related subjects that could help you navigate the stormy sea of Trademark registration.

I'm afraid I can't help you much more than this. Obviously, having hired a lawyer, I don't know much about how to do it without one.