What are the pros and cons of using online filing services for your trademark registration?
Learn all about it in this video:
Hi, I'm Andrei Mincov, and in this video, I'll walk you through the pros and cons of filing your trademarks through Online Trademark Filing Services. There are thousands of websites, law firms, attorneys, trademark agents who promise to help you trademark your brands. But essentially, there are just 4 radically different ways to do it. You can file your trademarks yourself.
You can use traditional law firms and attorneys. You can go with the company I founded, Trademark Factory®; Or you can use an online trademark filing service. And in this video, I'm going to explain the benefits and dangers of using such services. I'm also recording videos about the benefits and dangers of traditional law firms and attorneys and of filing your trademarks yourself. Make sure you watch them as well. So let's go through the pros and cons of online trademark filing service.
Online trademark filing services are one of the most common options people choose due to the very low fee they charge for filing a trademark. However, they create a false sense of security by focusing on the filing of your trademark for a very low price, rather than providing the full scope of services necessary to get your trademark registered. So how do you know you're dealing with an online trademark filing service? Just because they have a website where you can buy their services doesn't make them an online trademark filing service.
Many law firms that cover the entire trademarking process have web interfaces that allow you to buy their services online. Trademark Factory® covers the entire trademarking process also has an interface that allows you to buy our services online. In other words, a website with a form and an online payment system is not what matters. What matters is the scope of services you can expect to receive in exchange for your money.
When I say Online trademark filing services, I am referring to services that generate a trademark application based on the data you enter into a form on their website and file it with the Trademarks Office on your behalf. Their job is done once your application has been filed. From here on out, it's the same thing as if you filed your application yourself. Your trademark application will not have an attorney of record or a registered trademark agent.
This means, if you or your company are not U.S. residents, you can't file a U.S. trademark using such services. Because in the U.S., only U.S. residents can file U.S trademarks without having a U.S. attorney of record. But even aside from that, filing is only Step One in a long and complex process: once your application is filed, it will take about a year or more to complete the process. During that time, the Trademarks Office will issue at least one office action against 68% of all applications.
You will be expected to respond to all such Office Actions, Objections, and Refusals or hire an attorney to do so. Paying an attorney to respond to an office action on your behalf often costs at least $1,000, which can elevate the cost of the entire trademarking process to over $5,000, and doing it yourself requires specialized knowledge and time that most small business owners do not have. Online trademark filing services are a viable option for business owners looking for a simplified way of getting their trademark process started—as long as they are prepared to assume the risk of their trademark being refused and paying much more than what they initially projected.
There are two major advantages to using online trademark filing services.
First of all, the filing process is very easy. No need to deal with confusing government online forms. If you know exactly WHAT needs to go into your trademark application, such services can save you a lot of time in the filing stage. Also, you only pay a nominal fee (usually $299 or less) on top of the government fees. However, there are a bunch of disadvantages:
Disadvantage #1: You are getting a “trademark filing facilitation service”—NOT legal advice or legal service. Think about it. If these services are so great, why don't companies that own thousands of trademarks around the world use them? They would have saved tens if not hundreds of thousands of dollars. But instead, they choose to get their trademarks done right. Isn't that interesting?
Disadvantage #2: You must be a U.S. resident to file U.S. trademarks without an attorney. Online trademark filing service does not appoint an attorney to handle your application, which means that if you're not a U.S. resident and you need to get a U.S. trademark, you can't do it through an online trademark filing service. Simple as that.
Disadvantage #3: Your application will not be reviewed beyond obvious errors and spelling mistakes. Because of unnecessary government regulation and red tape, only attorneys are allowed to provide legal advice. Since online trademark filing services are not acting as your attorneys, they can't provide legal advice—even if they know the right answer, they are not allowed to give it to you by law. Especially in the U.S. and Canada, everyone is terrified of being accused of unauthorized practice of law. That's why when you file your trademark through an online trademark filing service, no one checks your application for descriptiveness, genericness, or legal compliance. As a result, your trademark application is as good as the data you provide when you fill out their form.
Disadvantage #4: Search reports (if provided at all) come without a legal opinion on whether your trademark is registrable. You need to make your own conclusions. This is also because of the fear of it being considered the unauthorized practice of law. They can provide automated search results. But they can't provide meaningful conclusions you can act on. Unfortunately, most brand owners will not be able to make correct conclusions based on the raw data presented to them this way.
Disadvantage #5: Your application will not have an attorney of record or a trademark agent on file. After your trademark is filed, you are on your own.
Disadvantage #6: Responses to substantive Office Actions, Examiner's Reports, Objections, and Refusals are not covered. Filing is easy. The real work begins after the Trademarks Office reviews your application in a few months. And as I already mentioned, the Trademarks Office will issue at least one office action for 68% of all filed trademark applications. This means that in 68% of the cases, you will need to: Hire an attorney to fix a poorly written application for $300–$500/hr. (if it’s even at all possible at that stage); Respond to the office action yourself (again, assuming it is still possible at that stage and assuming you can do it); or let your trademark application die.
And guess what?
Attorneys can easily bill you for over 10 or even 20 hours of their time to respond to office actions about descriptiveness and the likelihood of confusion. They don't do it because they're mean and greedy. They do it because these are the most complex types of office actions to respond to. The chances you're going to be able to successfully overcome these objections yourself, without an experienced trademark attorney, are slim to none.
Disadvantage #7: Hidden costs and upsells. If you run a Google Search for trademark registration services, you will see ads that promise to trademark your brand for $199, $99, $69, or even $47.Even government fees aside (which, by the way, is a surprise to a lot of brand owners), prepare to pay more than the advertised price. Often you need to pay extra for each class of goods and services in your application. Often you need to pay extra for a pre-filing trademark search. Often you need to pay extra to get your trademark filed without an artificial wait in a queue. And so on and so on. But all of that is minor. What really matters is, as I already mentioned, responding to office actions is not covered. When you get a bill for $5,000 to take care of an office action, it will matter very little if you filed your trademark for $49 or for $299, right?
Disadvantage #8: No refunds for refused trademarks. No money-back guarantee. This one is self-explanatory. Once they file your application, you will never see your money again if your trademark does not go through.
So as a summary: online trademark filing services make it very easy for you to get your application filed, but then, you are on your own. Nobody's helping you beyond filing your trademark. Their fees only cover their services relating to filing your mark and, at best, some technical follow-up to notify you of updates. You don't get anyone helping you ensure your trademark covers you as your business grows. You don't get anyone helping you evaluate the chances of your trademark before it gets filed. You need to figure out what constitutes acceptable specimens of use or other evidence to get your brand trademarked.
You don't have an attorney of record or a registered trademark agent handling your application. When your application is rejected, you're on your own. Do not expect any refunds. The big advantage of online trademark filing services is that they make getting the trademarking process started simple. The big disadvantage of online trademark filing services is that they make the trademarking process deceptively simple.
By way of comparison, Trademark Factory® makes the ENTIRE trademarking process simple for you. Every single step of the trademarking process is handled by experienced attorneys and trademark agents.ONE flat fee covers the entire trademarking process, from filing to registration, and provides insurance for ALL office actions. Trademark Factory® gives you the certainty of knowing your trademarking budget upfront, no matter how many objections are raised against your application.No hidden costs and no billable hours. You pay once and never see another invoice. Everything is covered by a 100% money-back guarantee.
Your trademark is approved—or you get a FULL refund. And yes, we have a 99.3% rate of success. This is the best option for business owners who are serious about their brands and who want to know exactly how much the entire process will cost before they get started. This is also the best option for business owners looking for insurance in the form of a full refund in case the trademark application is refused. Having said that, our flat fee may seem too high for those whose business is more of a hobby than a serious endeavor.
Also, we've discovered that large corporations may prefer their trademarks to be handled by an in-house legal team or a full-scope law firm—because the advantages we offer as a firm that focuses on trademarking and nothing else may be less important if you are already spending high 5 or even 6 figures on lawyers. But if you are a startup, an entrepreneur, or a small business and you want to get your trademarks done right, we could be a good fit for you. Simply follow the link in the description of this video—and see for yourself. And until then, I'll see you in the next video.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.