TradeMark Express Fans, which trademark service provider operates in “good faith” for their clients?
Who can a small business start-up trust with their intellectual property? For every trademark application, the USPTO, will do an internal search of their own database of ~3.5 million trademark. By statute, they are prohibited from researching the other 26.5 million State trademark or first use Common Law uses in the USA.
Still in 2020 the USPTO refused a whopping 48.3% of its new trademark applications. In 2016 it had been 40.9%.
Over the past 7 months, I have been writing articles about damage done to small business owners seeking to trademark their company names, logos and slogans. Trademark service providers either are not doing the needed legal research to clear a name, or don’t write a clean, thorough trademark application, or both. The common denominator are their low fees, preying on small businesses trying to save $.
Please see https://tmexpress.com/trademark-blog/.
TRADEMARK SCAMS
I have written about outright trademark scams like Trademark Pearl and Trademark Apex. There are dozens of new scams running right now in the USA. They pop up every day. Check their URL Whois record. These companies will literally do nothing but take your credit card and never give it back. They prey on ignorant business owners who think a trademark is like ordering a burrito on a Chipotle application. Welcome to chargeback hell.
TRADEMARK SERVICES
I exposed LegalZoom‘s continued and refined bait and switch practices. Pay $599, then be told you need the “legal” research for $299 = $898. After much top brass thought, and introspection months later, revised to pay $649, then be told you need the “legal” research for $299 more = $948, with the chill of waiting 7-10 days to be told what you really needed – the research too – which really isn’t comprehensive anyway, or is 80% at best.
Trademark Engine offers multiple frauds. Even beyond the credit card overcharging bait and switch gambit monitoring scam, Trademark Engine risks every single of their client’s trademark application with a looming USPTO probable termination. In my May 13, in person meeting with USPTO David Gooder in Alexandria, Virginia, we discussed Trademark Engine’s fraudulent practice of seemingly forging their client’s trademark application signatures. Without the process of discovery, I have to say “seemingly”.
The USPTO has already terminated 21,000 like forged trademark applications by 43 trademark service scams, 5700 in 2021 and another 15,000 in 2022. Trademark applications may ONLY be signed by the applicant themselves, or by their USA based attorney. Otherwise it is FRAUD. Please see the USPTO termination letter: https://www.uspto.gov/sites/default/files/documents/TM-Show-Cause-Order-Abtach-et-al.pdf. Please see my 2 articles: 1) February 26, 2022 @ https://conta.cc/3pkY1Zy and 2) March 12, 2022 @ https://conta.cc/3tR1KQe.
Too much to write about Trademark Engine.
TRADEMARK ATTORNEYS
Then there are ~1800 trademark attorneys in the USA. They pay top $, to go to 3 years of law school. They study 400 hours over 3 months to pass their State Bar Examination. Ethics is a required class. Ethics is a part of the bar exam. The ethics of a trademark attorney, means looking out for your client to mitigate trademark risk with legal research first, avoiding initial application refusals AND future cease and desist lawsuits over the next 10 years. What I have seen, even with OJT on-the-job training, trademark dabblers, many trademark attorneys KEEP FILING un-researched trademark applications. By definition, I call INCOMPLETE research, as being NOT DONE. Attorneys who keep drawing likelihood-of-confusion refusals should be suspended by the USPTO OED Office of Enrollment and Discipline.
Trademarks aren’t that hard when you base the client’s trademark application on TRUE comprehensive clearance legal search FIRST.
As related, here’s an excellent article by Michael McCabe about trademark attorney dabblers – “https://ipethicslaw.com/general-practice-lawyers-risk-oed-investigations-and-discipline-for-dabbling-in-ip-law/“.
Trademark attorneys do SOME research. They usually do a search on the USPTO’s free SEARCH tool, which is just a preliminary search which BTW is NOT a comprehensive legal clearance search. See https://tmsearch.uspto.gov/search/search-information. Try a search yourself. Some will take stabs at Google, Yahoo & Bing. Search engines are lousy at trademark research. None check the 1.5 million State trademarks where database access costs.
The problem is that similar names/marks in sound, appearance or meaning are NOT FOUND. Any findings are still NOT a comprehensive legal clearance search. Their track record proves it.
A true legal search involved thousands of databases. Access costs $1 to $5 a minute. It takes 6 hours to do a legal search. This work is called a “Comprehensive Legal Clearance Search”. When you get one, it will be hundreds of pages long because multiple custom written research strategies will be run to find similarities. Professional databases are needed to be accessed to be able to run such coded strategies, narrow and expand on the fly to catch everything needed for attorney analysis.
THE USPTO
At my May 13 meeting with Commissioner Gooder, David said the USPTO cannot make trademark attorneys or anyone else do proper trademark research. There had to be a change in the statute, via U.S. Congress. He said he is aware of the problem with attorneys. Mr. Gooder said the USPTO is working on ideas for education at multi levels to encourage comprehensive clearance legal research. More to come from the USPTO. Stay tuned.
TRADEMARK EXPRESS
We spend a year on average to train our research staff how to code and do a legal search. Legal research reports take us ~6-7 hours to run and write up, citing conflicts and similarities for attorney analysis. Many attorneys outsource to us to do their client’s comprehensive research to analyze themselves or commiserate with one of our network of 12 trademark attorneys. Like research by Corsearch and Thomson Compumark are $900 and $1225. Our research reports are cleared in steps: 1) USPTO preliminary, federal & State Trademark and first use Common Law. We have been the only trademark service since 1992 to offer clients step-by-step research, to rollover to a new name/mark and salvage some fees.
When done right, our client’s trademark applications reach registration without surprise.
Since 2008, the TradeMark Express track record is 100%.
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Thank you, Chris DeMassa 650-948-0530
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