4 ms·

Since you're an IP lawyer, would you recommend that people starting out file their own trademark applications? It seems daunting to me, and I would be concerne

by imp 16y ago

Since you're an IP lawyer, would you recommend that people starting out file their own trademark applications? It seems daunting to me, and I would be concerned about going through the whole process and winding up with a trademark that didn't appropriately protect me. Is that a legitimate concern, or should I not worry about that and file for a trademark myself? Edit: Any tips or resources for people who have never filed a trademark before?

skmurphy 16y ago
We worked with Athol Foden at http://www.brighternaming.com/ http://www.brighternaming.com/ (he has a lot of self-service resources on his site as well) to file the Bootstrappers Breakfast trademark. We paid about 1/4 of the rate that George is quoting (Athol is not an attorney) and had no trouble getting the trademark. If you have a complex situation you may benefit from an attorney, but I would take a look at the self-service resources on Athol's site as well.
nroach 16y ago
Generally speaking, trademark applications aren't difficult. If you're a detail-oriented person and don't mind doing some reading, you can absolutely do it yourself. The main advantage to hiring an attorney is that if you run into an opposition or if the examiner has an issue with your application, an attorney may be better able to persuade the office that the opposer is without grounds. Start with a TESS search on the USPTO's site for live applications. Read up on the US and International Classes that you might want to use and decide which are applicable. If you run into similar names in your desired class, it might be worth talking to an attorney about whether your mark is likely to be allowable. Pay close attention to the specimen requirements if you're doing an in-use application as compared to an ITU. A defective specimen that doesn't establish the elements for use as an identifier of the goods or services can be problematic. You might also see if your IP attorney is willing to walk you through the process the first time and then just answer questions on an as-needed basis. You could also work out the application on paper and just ask an attorney to look it over and use that form to fill in the information needed to file electronically.
- imp 16y ago
  Great! Thanks for the info. That's very useful.
  - nroach 16y ago
    If you do decide to go the self-filed route, make sure to read up on the categories of names in terms of whether your mark is protectable. (generic, descriptive =bad; arbitrary, fanciful =good) There's' plenty of good information here: http://www.bitlaw.com/trademark/degrees.html http://www.bitlaw.com/trademark/degrees.html

by imp 16y ago

skmurphy 16y ago

We worked with Athol Foden at http://www.brighternaming.com/ http://www.brighternaming.com/ (he has a lot of self-service resources on his site as well) to file the Bootstrappers Breakfast trademark. We paid about 1/4 of the rate that George is quoting (Athol is not an attorney) and had no trouble getting the trademark. If you have a complex situation you may benefit from an attorney, but I would take a look at the self-service resources on Athol's site as well.

nroach 16y ago

Generally speaking, trademark applications aren't difficult. If you're a detail-oriented person and don't mind doing some reading, you can absolutely do it yourself. The main advantage to hiring an attorney is that if you run into an opposition or if the examiner has an issue with your application, an attorney may be better able to persuade the office that the opposer is without grounds. Start with a TESS search on the USPTO's site for live applications. Read up on the US and International Classes that you might want to use and decide which are applicable. If you run into similar names in your desired class, it might be worth talking to an attorney about whether your mark is likely to be allowable. Pay close attention to the specimen requirements if you're doing an in-use application as compared to an ITU. A defective specimen that doesn't establish the elements for use as an identifier of the goods or services can be problematic. You might also see if your IP attorney is willing to walk you through the process the first time and then just answer questions on an as-needed basis. You could also work out the application on paper and just ask an attorney to look it over and use that form to fill in the information needed to file electronically.

imp 16y ago
Great! Thanks for the info. That's very useful.
- nroach 16y ago
  If you do decide to go the self-filed route, make sure to read up on the categories of names in terms of whether your mark is protectable. (generic, descriptive =bad; arbitrary, fanciful =good) There's' plenty of good information here: http://www.bitlaw.com/trademark/degrees.html http://www.bitlaw.com/trademark/degrees.html