What’s in a name? For startup founders and small business owners, coming up with a marketable name that captures the essence of their business can be a daunting task. Much like new parents naming a child, business owners put deep consideration into what their company should be called – and for good reason. A company name is used to introduce the company to market and helps a business stand out from its competitors.
Once a name is chosen, business owners become extremely attached to it, as their new business’ name is really the essence of their idea and a huge part of their intellectual property. With company names holding such an important role for both business and emotional reasons, it is no wonder small businesses turn to trademark protection so early in the life of the company to help protect and police their brand.
Two common challenges such startups typically face are the lack of experience in handling intellectual property (IP) filings and the resources to pay a lawyer to do it for them. Lawyers’ fees for preparing an application can add up to typically more than $1,000. When added to the required United States Patent and Trademark Office (USPTO) filing fees, this amount is generally quite a hurdle for a new business.
At the same time, most people starting a business have no experience filing trademarks and understandably need help with the process. As a result, the USPTO has seen filings without a lawyer as a percent of total applications increase by more than 100 percent since the early 1990s.
The trend toward filing without a lawyer has left many wondering what sort of impact this shift has had on the trademark application efforts of these businesses. Interestingly, analysis of USPTO data suggests that past experience in filings (whether as a lawyer or non-lawyer) is more important than working with an actual lawyer. In fact, non-lawyers with significant experience in filing trademark applications (more than 30 applications) are more successful at moving their applications through the process than lawyers with low or moderate experience in filing applications, and produce success numbers extremely close to those of lawyers with significant experience. With this, it appears that the consumer shift toward trusted brands with a great deal of filing experience has been warranted.
With such high success rates for non-lawyers, are lawyers ever really needed for a trademark filing? While experience with filings is the number one indicator of successful trademark registrations, good reason remains to maintain access to lawyers at certain points in the process. First-time filers may simply need assistance with the basic application questions. Do they understand the difference between intent to use and use in commerce? Do they understand the goods and services classifications? While much of this can be clarified without a lawyer, many first time applicants appreciate the peace of mind that comes with having the ability to ask a lawyer about topics like these. For entrepreneurs exploring the DIY route for trademark applications, it’s a good idea to see if potential providers offer access to attorneys for these types of limited needs.
A more measurable benefit of having a lawyer available arises when the applicant receives an office action from the USPTO. An office action is essentially the examining attorney’s way of letting the applicant know there is something in the application that requires clarification or amendment. Office actions can range from requiring simple additional detail on the applicant’s goods and services description to serious issues such as likelihood of confusion with an existing trademark. While this correspondence may seem out of the ordinary to the applicant receiving it, it is actually quite common. Just over 60 percent of all trademark applications filed with the USPTO receive some sort of office action.
While experience remains the key indicator of success in responding to office actions (again, the most experienced non-lawyers perform better than lawyers with relatively little or moderate levels of experience) the benefit in working with an experienced lawyer is clearest when handling office actions. Office action responses require communication with the USPTO, which can be intimidating for new business owners, and complex office actions require legal research and a thorough understanding of trademark law. When considering an alternative provider for trademark filings, business owners should consider what sort of office action response assistance is available. Some online services like LegalZoom provide office action responses at a discounted flat rate through independent law firms. Given that entrepreneurs certainly do not want to waste money on a lawyer when it isn’t needed, it’s great to have access to the resource at a moment’s notice.
Finally, in the event that a startup raises the ire and objection of an existing trademark holder, having a skilled lawyer available to negotiate with or fend off the other side could be priceless; especially if the company’s name is truly viewed as critical.
Ultimately, decisions around what kind of resources a startup or small business can put against something like trademark protection are unique to each company. When choosing the best route, it’s wise to consider the lifecycle of the application and try to cover the needs of the business, as it is almost always more expensive to bring someone in to fix work than to have help with it from the beginning. Today, there are great options for getting that kind of help at a price point a new business can handle.