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Discount TM Filings—Good Deal or Too Good to Be True?
© Cheryl Hodgson 2007 | Posted on July 9, 2007
By Cheryl L. Hodgson
© Hodgson Law Group 2007
Buying that expensive suit or designer handbag on sale may be a good value. However, when it comes to trademark filing services the discount route not be the best value after all. Several “do it yourself” or online consumer discount legal service sites also advertise trademark filings for deeply discounted prices, plus the filing fees of $325 per class.
The old saying, "If it sounds too good to be true, it is" comes to mind when deciding whether to rely upon such services. Why not use this service over that of a more costly charge by an expert trademark attorney? Before deciding, the business owner should ask: “Is the goal to successfully register the mark, or to file the application for the cheapest price?” More specifically, "Would you have an objection to paying a higher, flat fee for an experienced professional who has properly disclosed hidden costs, advised you of the risks of self-representation, and is likely to greatly increase your chances of success?"
The information these filing services fail to mention is often more important than the price they advertise.
First, trademark applications are assigned to one of several hundred Examining Attorneys working for the U.S. Trademark Office. The role of the Examining attorney is to make certain the applicant’s mark is legally registerable, and that extremely technical filing and use requirements are met.
Up to 80% of all applications filed on line for the three months ending February 2006, received a first office Action! In short, there is an 80% chance that the applicant will receive an initial rejection, requiring further response.
Companies such as and do not serve as legal counsel, and do not become attorney of record for the applicant. This means any official “Office Actions” are addressed directly to the applicant, who must craft his or her own response without assistance. Without adequate legal counsel, the unrepresented or under represented applicant is left to decide whether or not to respond, how to respond, and whether registration can be obtained. It is not the duty of the Trademark Examiner to offer free legal advice to applicants without proper representation.
While some office actions can be easily answered, others can be extremely complex. Trademark Examiners take their role seriously and make a good faith effort in their duties. However, they are human and do make mistakes, and are not always legally correct in their conclusions or requirements. An experienced trademark attorney is much more likely to realize these incorrect assessments when they do occur and successfully correct them. Moreover, in close cases, the need to present legal arguments and precedents to the Examiner can make the difference between success and failure, registration or final refusal.
What then is the value of paying for the trademark expert to act as your legal counsel of record? First, years of experience in trademark registration are needed to develop a sense of when and if an Office Action can be responded to with success. Proper planning of the filing before actually filing is extremely important. During the last two years alone a rash of decisions have subjected marks to cancellation due to acts of fraud upon the Trademark Office, which applicants should take seriously at the outset, before filing the first application.
While a substantially reduced "flat fee" may at first glance seem to be a "good deal," the experience of a true professional can greatly reduce the chances of rejection, and help insure the mark receives the broadest possible protection for the goods or services for which registration is being sought. A system of monitoring the status of an application is important, since as Office Actions can go undelivered, deadlines to respond can be missed, and Trademark Office mistakes occur.
Remember, the good-will of your business is its most important asset. The trademark registration you seek will serve as the good-will ambassador. Will it be a long-lasting and effective representative—or not?
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