The nitty-gritties of registering a trademark

Factual Questions
1

I want to register a trademark. Based on a preliminary search that a friend’s legal department did for me, I know that no one has trademarked the name already.

I’ve skimmed a number of books/websites, so I have a respectable grasp of what the TM process involves. Many of these said books/websites imply that an informed and careful layman can complete the process without a lawyer, and from what I’ve seen of the forms I think I could handle the application part.

The part that looks thorny (and is glossed over by most of those said books/websites) is addressing the “Office Actions” that the TM office sends back to you. OA’s are, in essence, challenges to your application. You must, in turn, make a case why your trademark does not conflict with other close-but-not-identical existing trademarks they turn up.

My friend, whose corporation is currently going through the process for one of their trademark applications, showed me the the package of arguments that his corporation lawyers prepared in response to the OA’s that the trademark office sent them. It seemed beyond the abilities of most laymen. (But I did not scutinize it too deeply. Also, it may have been lawyerish overkill to impress the client and/or jack up the legal fees.)

So, my question is: can it be done – Office Actions and all – by a layman? If the OA part is too tough, can I use a lawyer for just that phase of the process? Or will no respectable TM lawyer want to be bothered with an application that he/she gets handed midstream?

Also, let’s say I decide to go the lawyer route start-to-finish, assuming it’s a fairly routine case (that is, one TM in one category, w/no exact conflicts, but a few near-matches that can be argued away based on the nature of the goods/services involved), what can I expect the total process to cost me? $1,000. $5,000. More? (Please don’t quote lawyer hourly rates to me. It’s meaninglless because I have no idea how many hours a lawyer typically needs to do this sort of job.)

Thanks all!

(I consider this a GQ, but if a mod thinks it’s a IMHO topic, feel free to ship it out. I won’t complain.)

2

I’ve registered trademarks with the USPTO. Without legal help.

It is really not much of an ordeal, although it is definitely a slow process - takes about a year. All questions having to do with our applications were handled over the telephone between myself and a USPTO attorney.

So, yes, you can do it on your own. My only cash outlay was the initial fee which was - I don’t remember exactly - substantially less than $1000.

Here’s something that wasn’t available then: Trademark Electronic Application System

And I’m caused by that to pause and add that my experience is from ~4 years ago.

3

Over the telephone? Really? You just called them up and argued away their OA’s verbally? Wow.

4

The letter they sent advised me to first attempt to resolve any of the issues the noted in the letter by telephone, and gave me the number of the particular attorney assigned to my application.

I’ll add that nothing we trademarked looked at all similar to anything I found searching USPTO’s database myself. The trademark covers a representation. I noted during my wanderings through their database that one of our competitors had trademarked a representation of “SEI” (that being the first letters of the three words in their name. Well, they trademarked their representation, but there are many more SEIs registered to other companies that look a little different.

I think you can probably do it yourself for a lot less money than you’re presently thinking about spending. It is a slow process.

5

I have no experience whatsoever with trademarks, but I have some comments on peripheral matters.

[QUOTE]
*Originally posted by stuyguy *
Also, it may have been lawyerish overkill to impress the client and/or jack up the legal fees.

No such thing. What it might have been was overkill to impress the tribunal, but we don’t write long briefs to raise fees – we write long briefs because we have lots of things to say. That’s what you’re paying us for – to come up with arguments you wouldn’t.

If the OA part is too tough, can I use a lawyer for just that phase of the process? Or will no respectable TM lawyer want to be bothered with an application that he/she gets handed midstream?

Most lawyers will be happy to take your business whenever in the process you approach them – one of the things that can really generate a lot of work is digging the client out of a hole he got himself into pro se, so don’t worry about that. (I’d still recommend getting a lawyer from the start; that’s what I always recommend to everybody.)

–Cliffy, Esq.

6

Cliffy, thanks for the lawyerside perspective. And Ringo, thanks for recounting your experiences. I’d love to hear more firsthand stories, advice and/or warnings.

7

Try nolo.com They have Do It Yourself info & books…& the latest info.