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How to Avoid Pitfalls When Filing a Trademark

Create Time 2017-07-21 02:07    Views:1361

     You’re here because you’re a small business owner who wants to file a trademark to protect your brand. Great idea! You might be wondering where to start. A quick search on Google will give you a lot of information, and a lot of potential services! With these services in mind, you might start thinking: is filing a trademark really that easy? It looks like anyone can do it!  Our answer: Absolutely not! Filing a trademark the right way can be a challenging and time-consuming task – especially if it’s your first time.

To help with this task, we’ve identified these common pitfalls that applicants often encounter during the trademark registration process:

     A.      The “Low-Price” Online Service

    You’ll undoubtedly come across the words “Trademark Registration for Only a Small and Easy Fee!” Sounds like a deal, right? Stop right there – these companies aren’t telling you everything.

    Their first secret: hidden fees. Every legal trademark application has a required government filing fee, in both the US and Canada. These one-time fees occur regardless of the third-party services you use. “Low price” companies hide these required fees in order to promote false advertising.

    Their second secret: the trademark application you pay to fill out is often an exact duplicate of the government copy. You pay for the “service” of filling out the application, while the company merely copies and pastes your information into the real one! In effect, you're filling out the application on your own, but the attached fee makes it appear that the company is performing a “service” for you.

    B. Filing the Application on Your Own

    Suppose you decide to save money and simply file the trademark application yourself, using the USPTO (United States Patent and Trademark Office) website. However, filling out the trademark application can look deceptively easy.

    There are a number of issues that you may run into while filing your own application, issues that will add expenses or delay the time it takes to successfully complete your trademark registration.

    For example, you may be unsure of: what class your goods or services belong to, what a qualified specimen entails, or even which type of trademark to file for. You may also have to respond to official inquiries and office actions on your own.

    And on top of it all, you’ll realize that you’re taking time away from what matters – your growing business! – to learn about trademark applications. Time you can’t afford to waste. Trust us! In our heyday, we couldn’t even begin filing the trademark for “Witmart” without taking significant time to learn and understand the trademark process.

    By filing on your own, you put yourself in the open for spammers and scammers trying to steal secure information about you or your business. Remember that all of the information you submit to a trademark application is public. This means that one day, you may receive an e-mail or letter from the “USPTO” informing you that your application has run into a problem, and that you need to respond immediately to fix it. Almost always, this “fix” requires some sort of payment to the scammers who stole your information.

    Although this may sound ludicrous, many have fallen for these scams. Having a legal guide to walk you through the trademarking process will ensure not only your financial safety, but that of your growing business.

    C. Not Having a Registered Agent Assist You

    So, you’ve decided to hire a professional to file your trademark application. But be careful! Be on the lookout for trademark agents without certification. Uncertified agents – or robots – are not qualified to file the application for you, as they are not in a legal position to represent you during trademark registration. At most, their “help” is superficial and nonbinding – you’re still filing on your own. If issues arise, the trademark office will contact you, not your “agent, which means you will be responsible for fixing the issues that have arisen.

    D. Not Knowing the Full Cost Before You Start

    Pay special attention to the frequent charges that can occur with office action responses. They could cost you more money than filing the actual application! Office action responses can cover a wide range of “services”, including disputing a refusal of registration or merely providing a translation of your trademark.

    Some companies charge a standard fee per response, while others have a dynamic pricing range. But neither option is optimal for you and your business. Do you want to be charged an inflated rate just to have your trademark translated?

It’s so important to always look for a flat-fee pricing option. This way, all office action responses can be handled professionally, at no added expense to you.

    E. Not Knowing the Availability of Your Trademark

    If you knew your trademark’s name was already registered by someone else, would you still file an application? Of course not.

    Far too many applicants start trademark applications without checking their trademark’s risk level, an estimate of the likelihood of your trademark being rejected for any reason. A company that files your trademark without consulting your trademark’s risk level is a red flag. They may not have your best interests in mind – getting your trademark registered efficiently at no added cost to you.


    How to Avoid these Pitfalls


    If you’re starting to think that your mark will never get registered, don’t be discouraged. While registering a trademark may not be as simple as the Internet would have you believe, Witmart is confident that the steps below will ensure that you avoid any unnecessary pitfalls during the trademark registration process.

    Make sure a human being is filing your application. For online trademarking services, always ask yourself, “What makes this option better than simply filing on my own?” When consulting a service, always ask to speak to a real person, and make sure that person is there to guide you through the process. If your current trademarking efforts are hitting these roadblocks, it might be time to reconsider the service your business needs.

    Have a thorough understanding of the trademark application process. This is especially important if you are filing on your own! You should be familiar with: the types of trademarks available to you, the correct description and/or type of your own trademark, the full list of your business’ goods and services, the correct format in which to submit a specimen, and most of all, proper responses to office actions.

    Even if a trademark agent is filing for you, you should still have a basic understanding of these processes, including where you stand during each stage. After all, it’s your money that’s being spent to ensure your business’ growth.

    Check your agent’s credentials. If your agent claims they are certified, you should verify it. Ask for their registration number, as well as the board or society in which they are registered (they’ll know what you’re asking!). Search for their name in a federal, state, or provincial database if possible. No one wants to be scammed by someone who claims to be who they are not.

    Always try to settle for flat fees. When discussing pricing, you should ask for the total price that you will be charged. Ask, and then check on your own, whether this fee increases with the number of office actions your trademark registration receives. You don’t want any surprises to come up in the middle of the registration process, especially when you’ve already sunk in enough time and money!

    Know your risks. Getting a trademark search completed, and assessing one’s trademark risk level, is important. But how would you know whether this search was thorough? If you are being charged for a trademark search, you’ll want to know that your money is being well spent.

    A comprehensive search should include, at minimum, a full database search for both identical and similar trademarks to your own. And, don’t forget to compare your trademark with all registered, filed, expired, rejected, and abandoned trademarks, as well as any and all trademark variations. Finding a similar trademark in a related NICE classification, within the same jurisdiction, could mean an increased risk to your trademarking registration.


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