Why I Don’t Trust LegalZoom for Trademark Registration

In Blog, Trademark 101 by Shannon Montgomery

If you’re ready to register your trademark chances are your business is doing well, and you’re growing. Which is great news! This also means you’ve likely spent considerable time managing your expenses extremely well to allow for this growth. Is that why you’re considering employing LegalZoom or a similar company, to file for your trademark registration? Let me stop you right there.

Aside from the chance of losing your mark altogether, there are many other reasons why I advise against this. Here are just a few I think you need to know.

Non-Attorney Registration Company

First and foremost LegalZoom is not an attorney. They clearly state that on their website. They are merely a registration service that prepares the proper documents. What they can’t do is give you any kind of legal advice on your trademark, or the likelihood that it gets approved by the USPTO.

Little known fact, the USPTO almost wants to deny your application. They are set up to do so. A trademark needs to be distinctive, and there are a whole host of other qualifications that LegalZoom does not have the ability to review for you. When you work with an attorney, we have the ability to look at your chosen mark and give you our best opinion on what, if anything needs to be adjusted to gain the desired approval. And just so you’re aware, when the USPTO denies your application you do not get your money back. The money you thought you were saving by using LegalZoom instead of an attorney ends up a wash.

Incomplete Registration Search

LegalZoom doesn’t have the ability to do a proper trademark search for you either. They search the USPTO website for anything that is currently registered that is exactly like the one you wish to register. Why is this an issue? Well, one, the USPTO will deny a mark that is confusingly similar to something already registered, not just exactly like a registered mark. Secondly, there are plenty of other places that need to be searched. When someone begins to use a logo or phrase or what we would consider a word mark in commerce, they gain certain common law protections for those marks. That said, if you attempt to register a mark similar to something already in use, you open your business up to liability for trademark infringement. Working with an attorney provides you with a much more comprehensive search to ensure your mark does not infringe on another mark, registered or not.

No one to protect you if you’re faced with an office action

LegalZoom won’t be there to protect you should someone challenge your mark during the 30 day opposition period after your application is submitted. And they certainly won’t be there should you receive an office action from the USPTO office. Nearly all trademark applicants receive some type of office action seeking more information, or a correction to your application. LegalZoom does not do anything to help you with these. You as the prospective registrant gets the notice and is left to figure out the best way to handle it. Often times people give up at this point out of fear, and lack of knowledge. Once again, the money you hoped to save by utilizing a company like LegalZoom will be all for naught.

The trademark registration process is very nuanced. Sometimes I might advise waiting to register depending on where you are in your business, and how prominent that mark has become. Other times I can help determine if its time to move past a certain mark the USPTO office has hinted at not approving by helping to pick something new for your brand. Intellectual property is important to most businesses, particularly those working in the online entrepreneur space. Your logos and brand names are your business. Do you really want to risk losing the ability to register and protect your mark from dilution because LegalZoom can’t provide a thorough application for you? Probably not. Not if you’ve grown your business like I know you have. Be smart, budget wisely, and find an attorney to handle your registration for you.

Think I am the attorney for you? Great! Email shannon@montgomerypllc.com and we can discuss your options for registration of your most valuable assets!

Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.