# Trademark - DIY or Legal Service?



## technician79 (Oct 9, 2006)

Hello everyone,

Just wondering when you guys got your trademark. Did you do it yourself or got it through a legal service like legalzoom or thetrademarkcompany? Is it really that hard that you need to hire a legal service? If yes, which legal service would you recommend and why? 

Also, for the USPTO fee of $325 or so, does that include your company name and the logo? or just the name and to trademark the logo is an additional $325? And what if your mark gets rejected, do you have to pay the fees again to reapply? Thank you.


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## kimura-mma (Jul 26, 2008)

For a legal service to file your application, you need to provide them the info by answering a questionnaire. So if you can give the info to the legal service, you can probably just file the application yourself. The application is not easy, so it will take some time. But the USPTO site is very good and explains what everything means as you go through the process.

So if you are considering using a legal service, see what else they provide. If you think those extras are worth the money, then go with it. Otherwise, you can probably save yourself a few bucks and do the application on your own.

The application fee is for one mark. So you can register either your brand name or logo. To register both would require two applications and two payments. Depending on why your mark gets rejected, you should be given a chance to amend your application without paying a new fee. If you have to reapply using a completely different mark, you will probably need to pay a new application fee. But it's probably a good idea to contact the USPTO or a trademark attorney to verify this.


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## binki (Jul 16, 2006)

I would never do at TM application as a DYI again. One was enough. 30 months and lots of problems with the process that I didn't expect. You need an attorney that knows TM law and how to get your Mark through the process. I service may do just as well but they are typically not attorneys so you may have to do some of the heavy lifting.


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## technician79 (Oct 9, 2006)

Thanks for the reply and info guys. Man, this stuff is getting complicated. I thought I could just get shirts made and start selling but theres a lot of crap that needs to be done like fictitious business name reg, trademark, Business license, etc. 

Anyways, is there such thing as a free comprehensive trademark search site? Someway to check to see if there's any applications in progress under the name I want to trademark. Thanks again.


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## technician79 (Oct 9, 2006)

kimura-mma said:


> For a legal service to file your application, you need to provide them the info by answering a questionnaire. So if you can give the info to the legal service, you can probably just file the application yourself. The application is not easy, so it will take some time. But the USPTO site is very good and explains what everything means as you go through the process.
> 
> So if you are considering using a legal service, see what else they provide. If you think those extras are worth the money, then go with it. Otherwise, you can probably save yourself a few bucks and do the application on your own.
> 
> The application fee is for one mark. So you can register either your brand name or logo. To register both would require two applications and two payments. Depending on why your mark gets rejected, you should be given a chance to amend your application without paying a new fee. If you have to reapply using a completely different mark, you will probably need to pay a new application fee. But it's probably a good idea to contact the USPTO or a trademark attorney to verify this.


Hi kimura-mma,

By any chance have you filed a trademark by yourself? How did it go? I have been reading some threads regarding trademarks and you have posted some very useful information. I think after reading your comments, I should either file it myself or find a tm attorney to do it. I have read on a thread that you mention to someone that the use of the trademark is one of the steps to get a trademark. Does this mean that someone should have shirts made with their pre-trademark name before applying for a trademark? What happens to the merchandise if the trademark gets rejected? or can I just have a website with mocked up shirts with my logo? you think that will work? Thank you.


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## binki (Jul 16, 2006)

technician79 said:


> Anyways, is there such thing as a free comprehensive trademark search site? Someway to check to see if there's any applications in progress under the name I want to trademark. Thanks again.


http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4805:dq4pt.1.1


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## kimura-mma (Jul 26, 2008)

technician79 said:


> but theres a lot of crap that needs to be done like fictitious business name reg, trademark, Business license, etc.


A trademark is not a requirement to sell shirts. It's up to you if you choose to trademark or not.



technician79 said:


> Anyways, is there such thing as a free comprehensive trademark search site? Someway to check to see if there's any applications in progress under the name I want to trademark.


You can search the database at United States Patent and Trademark Office.


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## kimura-mma (Jul 26, 2008)

technician79 said:


> By any chance have you filed a trademark by yourself? How did it go?


I did my first trademark through LegalZoom. Then I realized I could just as easily do it myself. I have done several on my own and they went perfectly fine. No problems at all.



technician79 said:


> I have read on a thread that you mention to someone that the use of the trademark is one of the steps to get a trademark. Does this mean that someone should have shirts made with their pre-trademark name before applying for a trademark?


Yes, proving use of the mark is part of the registration process.

If you are not using the mark yet, you can file the application as an "intent to use." But once you start using the mark, you will need to provide a "statement of use," along with an additional $100 fee, as part of the process.

If you are already using the mark, you can provide proof along with your application and save the $100.



technician79 said:


> What happens to the merchandise if the trademark gets rejected?


Nothing.

The USPTO doesn't care about the merchandise you sell. If the shirts infringe on an existing trademark - and the trademark owner catches you - they can take legal action. If this happens, you will probably have to destroy the shirts. Otherwise, just sell them and don't use the rejected/infringing mark anymore.



technician79 said:


> or can I just have a website with mocked up shirts with my logo? you think that will work?


Using the mark on a t-shirt is not sufficient proof of use. You need to use the mark to identify the source of goods. Provided the mark is your brand name, you should use it on a neck label or hangtag. Take a pic of the label or tag and that can be used as your proof of use.


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## technician79 (Oct 9, 2006)

binki said:


> TESS -- Error


Thanks Binki. But that search only shows dead and live trademarks correct? Not the ones that are in progress. I guess that's something only a TM attorney or legal service can do.


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## technician79 (Oct 9, 2006)

kimura-mma said:


> I did my first trademark through LegalZoom. Then I realized I could just as easily do it myself. I have done several on my own and they went perfectly fine. No problems at all.
> 
> 
> Yes, proving use of the mark is part of the registration process.
> ...


Thanks a lot kimura-mma. Great information. I'll definitely take your advice on things. Sounds like you've been around the block a few times. Didn't know about the statement of use $100 fee. Having a shirt printed with a neck label is a lot cheaper than $100. Is there a limit on the items you submit as proof of statement of use? Would adding business cards, a company website, better your chance of getting your trademark approved? Thanks again.


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## kimura-mma (Jul 26, 2008)

technician79 said:


> But that search only shows dead and live trademarks correct? Not the ones that are in progress.


USPTO searches include applications that are in progress. Any search result that is live and has a serial number but not a registration number is a pending application.


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## kimura-mma (Jul 26, 2008)

technician79 said:


> Is there a limit on the items you submit as proof of statement of use? Would adding business cards, a company website, better your chance of getting your trademark approved?


Proof of use is proof of use. It doesn't matter how many you show. I would stick with anything that communicates to the consumer where the shirt came from. So labels and tags that are affixed to the shirt has more value than a business card or screen shot of a website.


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## TUANISAPPAREL (Oct 14, 2012)

Filing a trademark is usless... Yes you heard me a trademark is usless. I filed a trademark and 7 months later I had my attorney send a cease and decest letter to someone who was using the same name and they went and opposed my trademark and I am now fighting it and have spent over $5, 000 and have learned that having a trademark gives you zero protection unless you have a shiat load of money to back it up. First use always wins as a matter a fact your trademark must go un challenged before its 100% solid. Slap a tm on your brand and keep records of your sales and that is all you need. I spent $28k and this is where I am becuase of a trademark www.tuanisapparel.com

Sent from my SAMSUNG-SGH-I317 using T-Shirt Forums


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## technician79 (Oct 9, 2006)

kimura-mma said:


> Proof of use is proof of use. It doesn't matter how many you show. I would stick with anything that communicates to the consumer where the shirt came from. So labels and tags that are affixed to the shirt has more value than a business card or screen shot of a website.


Thanks kimura-mma. That makes sense. Got it.


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## technician79 (Oct 9, 2006)

TUANISAPPAREL said:


> Filing a trademark is usless... Yes you heard me a trademark is usless. I filed a trademark and 7 months later I had my attorney send a cease and decest letter to someone who was using the same name and they went and opposed my trademark and I am now fighting it and have spent over $5, 000 and have learned that having a trademark gives you zero protection unless you have a shiat load of money to back it up. First use always wins as a matter a fact your trademark must go un challenged before its 100% solid. Slap a tm on your brand and keep records of your sales and that is all you need. I spent $28k and this is where I am becuase of a trademark TUANIS APPAREL LLC | Tuanis is an authentic lifestyle brand rooted in surfing, skateboarding, snowboarding, outdoor adventure, music, arts and more.
> 
> Sent from my SAMSUNG-SGH-I317 using T-Shirt Forums


Wow Tuanis. Sorry to hear that man. Hope things go in your favor. I looked at your website and your products are very nice.

When you say slap a tm on it. Do you mean to make shirts with my company name or logo and add a tm on it even though I do not actually have a tm yet? Thank you and good luck.


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## TUANISAPPAREL (Oct 14, 2012)

Ya its been a lesson from hell in trademarks. You can use TM without registration just not the R symbol. That's all you need. If anyone uses your name after you start selling you have the upper hand in any legal battle. Until they change the laws for first register trademarks are usless. 

Sent from my SAMSUNG-SGH-I317 using T-Shirt Forums


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## technician79 (Oct 9, 2006)

TUANISAPPAREL said:


> Ya its been a lesson from hell in trademarks. You can use TM without registration just not the R symbol. That's all you need. If anyone uses your name after you start selling you have the upper hand in any legal battle. Until they change the laws for first register trademarks are usless.
> 
> Sent from my SAMSUNG-SGH-I317 using T-Shirt Forums


Thanks for the info. I feel for you man. I did a trademark search on your company and it showed that you filed like 6 months before the other guy. I thought that once you file for a trademark any future ones in the same category will be rejected. Man, this stuff is confusing. Hope it works out in your favor and you recover all of your lost money back. Good luck and take care.


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## technician79 (Oct 9, 2006)

kimura-mma said:


> USPTO searches include applications that are in progress. Any search result that is live and has a serial number but not a registration number is a pending application.


kimura-mma. This reply was very helpful for me. Thanks alot. Do you know what searches TM attorneys use to justify the $100-300 for a Trademark search? Are they actually providing more information on the mark than what can be found from the USPTO search? Lastly, what's the difference between TEAS application and the TEAS plus application? I heard the plus is more difficult but in what way? and is it worth it to save $50? Thank you again. Have a great day.


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## kimura-mma (Jul 26, 2008)

technician79 said:


> I thought that once you file for a trademark any future ones in the same category will be rejected.


Not if the future one can actually prove first use.


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## technician79 (Oct 9, 2006)

kimura-mma said:


> Not if the future one can actually prove first use.


Oh I see. So that's how the game works. Man, that is pretty scary then. I better get rolling soon.


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## kimura-mma (Jul 26, 2008)

technician79 said:


> Do you know what searches TM attorneys use to justify the $100-300 for a Trademark search?


They use different search techniques and have access to legal databases, etc.



technician79 said:


> Are they actually providing more information on the mark than what can be found from the USPTO search?


Yeah, probably.



technician79 said:


> Lastly, what's the difference between TEAS application and the TEAS plus application? I heard the plus is more difficult but in what way? and is it worth it to save $50?


What is the Difference Between (regular) TEAS and TEAS PLUS?


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## RIIR (Jan 18, 2011)

I registered my company name and logo myself and found it to be a painless process. As others have stated, do a thorough search using different variations of your name - this is important.

Prior to filing, watch the videos on the USPTO website. They will assist you and answer any questions you may have. It's extremely important to pay attention to every detail. I registered my company name and logo at the same time and the logo with through without a hitch, but there was an issue with my specimen for the company name. I just had to reply with new specimens, and after a couple of months, got the trademark for the name too.

The key is in the details and to be very patience. My logo took about 6 months and the name took about 1 year.

Good luck!


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## Riderz Ready (Sep 18, 2008)

TUANISAPPAREL said:


> Filing a trademark is usless... Yes you heard me a trademark is usless. I filed a trademark and 7 months later I had my attorney send a cease and decest letter to someone who was using the same name and they went and opposed my trademark and I am now fighting it and have spent over $5, 000 and have learned that having a trademark gives you zero protection unless you have a shiat load of money to back it up. First use always wins as a matter a fact your trademark must go un challenged before its 100% solid. Slap a tm on your brand and keep records of your sales and that is all you need. I spent $28k and this is where I am becuase of a trademark www.tuanisapparel.com
> 
> Sent from my SAMSUNG-SGH-I317 using T-Shirt Forums


Dead on! If people want to steal your design or logo they will do such - part of the business. I cannot count the number of times people get all hung up on how to protect designs, logos, etc and have yet to sell a single thing.

The reason this should be far from your top concerns is that great design artist are a dime a dozen and work cheap. Not really any reason for a average person to steal a design/logo when they can get one for next to nothing.

For those that are going to steal a design/logo, they are going to do so whether you have a legal trademark or not.

All the time and money you are investing on this topic should be diverted to sales and marketing.


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## technician79 (Oct 9, 2006)

RIIR said:


> I registered my company name and logo myself and found it to be a painless process. As others have stated, do a thorough search using different variations of your name - this is important.
> 
> Prior to filing, watch the videos on the USPTO website. They will assist you and answer any questions you may have. It's extremely important to pay attention to every detail. I registered my company name and logo at the same time and the logo with through without a hitch, but there was an issue with my specimen for the company name. I just had to reply with new specimens, and after a couple of months, got the trademark for the name too.
> 
> ...


Thanks RIIR for your help. I will definitely check out the videos on USPTO.


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## chargerrt340 (Jan 23, 2014)

So is it worth it to do it yourself or hire an attorney. A local attorney quoted me 1250$ for one trademark, and 200 for each after that.


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## kimura-mma (Jul 26, 2008)

chargerrt340 said:


> So is it worth it to do it yourself or hire an attorney. A local attorney quoted me 1250$ for one trademark, and 200 for each after that.


It depends on your budget. Doesn't make sense to blow through most of your budget and not have anything left over for production and marketing. Your trademark won't be worth anything if you have no product to sell. But if you can easily afford $1250 on a trademark and still have plenty of money left over to produce shirts and market your brand, then you're good to go.


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