A USPTO Office Action is a letter from a trademark examiner at the US Patent and Trademark Office (USPTO) about issues or defects in the trademark application. These issues must be remedied within a specific period of time (usually 6 months), or the trademark application will be deemed abandoned and the application fee lost.

What happens when your trademark is rejected?

Avoiding USPTO Office Actions Require Strong Trademark Applications

Most people do not realize how complicated a trademark application actually is. In spite of the variety of ways to file your application, taking a DIY approach may actually wind up costing more in the long run.

Even for licensed attorneys and trained trademark professionals, it is hard work. Not only that, if we’re not careful, we can potentially expose our clients to a trademark infringement lawsuits.

Our firm is increasingly active in trademark registration, and to increase our business in this area means we need to be marketplace competitive with the big “non-lawyer” companies out there, such as LegalZoom.

Tips to Registering a Trademark

When registering a trademark, it really helps to:

  • Trademark Assessment. Conduct a trademark assessment not just to see if there is a “direct-hit in the federal trademark database for direct conflicts with your trademark”, but to see if there is a “likelihood of confusion” with other existing trademarks.
  • TEAS Plus. TEAS Plus is the electronic filing system of the USPTO. It is both less expensive, and has a higher success rate for first time trademark applications. The USPTO claims that TEAS Plus has a 33.5% first-time success rate, versus a 18.6% first-time success rate for the next-best option, TEAS RF.
  • 81.4% of TEAS RF Applications are turned down the first time.

  • Proper Description and Class Codes. Descriptions and class codes have a dramatic impact on the strength and viability of a trademark. On the one hand, more class codes and a broad description enhance the value and strength of the mark. On the other hand, more class codes or a poorly drafted description can increase the possibility your trademark will overlap with a pre-existing mark and cause a likelihood of confusion. Finding the right balance is as much an art as it is a science.

Only Trademark Attorneys Can Help Avoid Office Actions

Interestingly, when you examine the “fine-print” for LegalZoom trademark registrations, their service seems almost destined to cause problems for its clients:

  • Their offerings only include “a basic federal direct-hit search of the federal trademark database for direct conflicts with your trademark (a $75.00 value) or a discount on [their] Comprehensive Trademark Search Package.” As explained above, such a “direct-hit search” is almost worthless — the USPTO reviews trademark applications using a “likelihood of confusion” analysis, which is significantly more challenging than a “direct-hit search”. Read the USPTO’s Possible Grounds for Refusal of a Mark to see what I mean.
  • LegalZoom says their trademark registration “consists of the government discounted TEAS RF electronic filing,” which the USPTO says only has an overall first-time success rate of 18.6%.
  • Finally, because LegalZoom is not actually a law firm or a collection of lawyers, they simply do not have the training or capability to advise their customers on trademark descriptions and class codes. Their forms simply ask basic questions, and leave it up to the customer to figure this out for themselves.

A Note on Success Rates

All this has us wondering: Just what are the success rates for LegalZoom trademark registrations??!? LegalZoom claims to have filed over 220,000 applications.

The key word here is ‘filed’. Unlike attorneys, LegalZoom does not put their name on a trademark application. There’s no way to search the USPTO database to determine what trademarks LegalZoom had a hand in helping to register. As such, there’s no real data or proof to assess LegalZoom.

LegalZoom might actually wind up costing your business more!

Trademark attorneys are quite different. We attorneys must indicate who we are when we help file or register a trademark on a client’s behalf. I, for example, have my name on the trademark applications I’ve helped to file, including old trademarks that have since become cancelled or abandoned. In other words, attorneys have real data to measure their performance.

So, what sort of success rates could we possibly attribute to LegalZoom? It would stand to reason their first-time success rates are similar to the USPTO’s overall first-time success rate of 18.6% for TEAS RF applications. If that is indeed LegalZoom’s success rate, just what do the other 81.4% of their customers do when they receive a USPTO Office Action??!?

Answer: LegalZoom tries to sell a “business advantage pro” subscription (which is simply a prepaid subscription to access a pool of lawyers LegalZoom refers work to), in either 6-month or 12-month increments. After paying the subscription fee, customers are refereed to a trademark attorney that has agreed to LegalZoom’s flat-rate pricing scheme for responses to USPTO Office Actions. Generally speaking, these prices are higher than the going average for many trademark attorneys advertising on the Internet, including Law 4 Small Business.

In short, LegalZoom appears to provide a service that is likely to be initially rejected by the USPTO, and therefore take longer and cost more than what you might expect working with trademark attorneys directly to help register your trademark.

Flat-Rate Fees for Responses to USPTO Office Actions

You can afford a trademark attorney!

L4SB is proud to announce that we have a cost-effective, fast-turnaround, two-step process to USPTO Office Actions: Our first-step costs just $49. This is where we quickly evaluate your Trademark Office Action for your Trademark and give you a flat-rate cost-estimate on what it would take for our response to the Office Action. The second-step is preparing a professional response by a trained and experience trademark attorney for a reasonable, competitive, cost-effective flat-rate price.

Special Offer for LegalZoom Trademark Customers

We’re marketing this service to all trademark applicants out there who are not represented by a trademark attorney. And, if you are a LegalZoom customer and your USPTO Office Action is a result of the trademark application LegalZoom helped you with, we’ll give you 10% off our already competitive flat-rates by using the coupon code “legalzoom-tm” when you order a Trademark Office Action Evaluation with us (you must submit proof to us that your trademark application was prepared by LegalZoom).

Law 4 Small Business. A little law now can save a lot later.

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