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Can I file my own patent or trademark application?

Mar 15, 2017

These days, it seems everyone wants to do it yourself. I love this can-do spirit. People are building their own homes, growing their own vegetables, sewing their own clothes. And for every project, there is a YouTube video that shows you how. I always try to unclog my drain myself before calling a plumber.

Legal services are no different. You may not know that yes, you can in fact file your own patent or trademark application. For the right person and circumstance, getting a patent or trademark this way is a great option. If you truly want to file on our own without any attorney help, all you need are the documents to upload, access to the Internet and a credit card to cover the filing fee. You can technically file a provisional, non-provisional or design patent application at the U.S. Patent & Trademark Office in an hour, perhaps even a half-hour, depending on how many documents you need to upload. Trademark applications require even fewer documents—some applications require none at all. Of course, you would have to know, or figure out, what documents to file and what they should contain.

For those who would like some attorney guidance, legal self-help sites can hook you up with a behind the scenes attorney. You answer some basic questions online, choose options and pay a flat fee. Your assigned attorney completes the application from the information you supplied, then does the filing. On one site, you can register a trademark for a flat $825, which includes a “comprehensive” search, analysis, preparation and filing, government filing, monitoring application status and responding to a “basic” office action. Sold separately, the site says, these services would cost more than $1100.

In the spirit of full disclosure, I have never “bought” a patent or trademark application in this way, so I cannot speak to what a “comprehensive” search and analysis includes. For my clients, I always offer and recommend a customized trademark search that will allow them to make an informed business decision whether or not it is worth applying for a trademark, wherever they want to apply. Some want to sell their product only in the United States. Others want a trademark in Europe, or Asia.

More importantly, a targeted trademark search will also identify any risk of trademark infringement. Not every client wants or needs a search, but that is their option. I hate surprises. I would guess so do most of my clients. There is somewhat of an art to the search. I search the U.S. Patent & Trademark Office, not only for an exact match, but also for alternate spellings, root words, foreign translations, symbols, designs, goods and service classifications. I am looking also for the owners. Apple, Disney, Nike, Coca-Cola, Fresh cosmetics, Louis Vuitton and many, many others vigilantly police the PTO for new applications that might infringe on their brands. Would you be able to determine this on your own? Do you have the time? Who do you call if you have a question? What if your question takes more than 10 minutes? What if you have more questions? Does the flat fee cover those?

And what will you do if you receive an “office action?” Granted, some of these are clerical in nature, like resubmitting a clearer photograph, or editing the description of the mark itself. But others are more serious, as when the examiner finds “likelihood of confusion” with someone else’s trademark, or that your mark is “merely descriptive.” Those are potential trademark killers. If you received one, would you know how to respond?

I am in the business of writing patents and trademarks, so of course, I’m biased. However, for the right person and task, there is definitely a place for taking care of certain legal business yourself, or through a self-help site. It depends on how much time you are willing to commit and how much risk you are willing to take on. If you are in the least unsure, contact a qualified attorney. Many offer a free phone consult. When you find one you like and trust, who understands you, and your business, your investment in their personalized advice will give you peace of mind. This will pay for itself many times over.

Post Categories: Patents | Trademarks
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