Having your business name trademarked can be an incredibly valuable thing for your business, because it prevents other businesses in your category from using your name. Learn why you might want a trademark and why trying to file a trademark yourself might be a bad idea.
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How Important are Trademarks and Should You File One Yourself?
Video: Should you file your own trademark?
Many small business owners have consternation when it comes to using the services of a competent business attorney. Attorneys are expensive. Sometimes you feel like you can do the work yourself using a legal document template online or using a service like LegalZoom. And some times you can do things yourself, but attorneys aren’t there for when everything goes right. You have them in your pocket for when things don’t go right and you need a professional to get you out of a business or a legal mess.
Someone recently posted on my Facebook group about how they were able to research the trademark application process and file a trademark themselves using the patent and trademark office’s website without the use of an attorney. He said he spent about an hour reading, researching and doing the application. In some cases, this will work out okay. You’ll get your trademark approved and be on your way.
Now, a trademark will basically protect your business name from being used by someone else in your business category. So, I have the trademark for MarketBeat, so that means nobody else can use that in the financial services, but that wouldn’t stop anyone from opening a grocery store called MarketBeat if they wanted to. If you have a very unique business name, usually you can get a trademark, but if there are other people already using your business name or you have a very generic business name, you might not be able to get a trademark. My advice is to trademark your business name if you can, because it adds to your credibility and protects your brand name. So, should you file one yourself?
There are a lot of things that can go wrong in a trademark application process though. If you file your trademark in the wrong category, someone else could legally use your brand name and you wouldn’t be able to do anything about it. If the USPTO examiner thinks that your trademark is too similar to an existing trademark, they may reject your trademark. I
In my case, I was trying to get a trademark for the name MarketBeat after we bought the domain name in 2015. I worked with Patrick Kneckt at Boyce Law firm to file the trademark. He picked out the best classifications for our business, filed the application for us and monitored it as it worked its way through the system. In my case, the USPTO initially thought that my trademark was too descriptive and issued an office action to reject it. Basically, you can’t trademark a name like “African Grocery Store” or “Sports Gear Company”, because the business name was too descriptive of what the business does, or it’s just not unique enough. My trademark attorney was able to successfully argue that MarketBeat had multiple meanings and was able to overcome that office action. It ended up taking about 15 months in all and cost a few thousand dollars to do, but we were able to get our trademark application approved. Now, had I tried to file my own application, I probably would have given up after the trademark examiner initially rejected my trademark, but because I was working with a competent business attorney, they were able to overcome this initial rejection and get me the trademark.
It’s a good thing that we did get our trademark approved, because we’ve had multiple other companies infringe upon the name since we got it trademark. A major stock exchange launched a podcast called MarketBeat and they immediately renamed it after our attorney sent them a polite letter. There was another website like MarketBeat Today that someone had launched and we sent them a note nicely asking them to switch to a different name. Knowing we had a trademark on the name MarketBeat, they quickly shut down their website and relaunched it under a new brand.
If you are looking to trademark your business, Sean Kaufhold who is a business attorney posted some good advice. There are a lot of nuances to trademark applications and making mistakes on your application can cause you to lose your trademark or cost thousands of dollars to fix. If you want to file a trademark yourself, at least take the time to meet with an attorney and get an initial consultation before filing a trademark yourself so that you don’t make a major error. Many law firms do offer free consultations to determine what your options are and whether or not you need protection or not. Mr. Kaufhold says his firm does this and I’d recommend that you take him or someone like him up on that offer, because making mistakes on federal documents can get very expensive to fix.