Let’s start with the FACTS.1) When you contact a trademarkservice or attorney, their duty andresponsibility is to actually help you. They see the results of their work every day. Overtime, they of all people KNOW when their work for their clients is effective or NOT. We aretalking your $, your life savings, your business dream that has to to start off on theright foot. Redoing a startup is hell.
2) Trademark law is broader in coverage than people realize.Always. Marks need tobe LEGALLY CLEAR under trademark law. Similar names in sound, appearance andmeaning matter. Distribution channels matter. Customer types matter. Related goods andservices matter. Famous names and aggressively litigious over reaching trademarkowners matter.
3) To do an accurate pre-trademark applicationresearch literally thousands of paiddatabases must be accessed – including the USPTO, each State, full array of business,trade, corporate, fictitious name and yellow page complied and updated databases. Thiswork is critical for the foundation of your trademark and successful business. It takes us ayear to fully train a person how to do a search. The research itself takes 3 hours for atrademark search and another 3 hours for a Common Law search. Applications, to getthings just right for our client to submit, takes us another 3 hours. So, 8-10 hours.
4) Risk of your trademark refusal is REAL.Our clients are blocked 35%-40% of thetime. Great names more. The USPTO – who by statute – can only research its owndatabase, per my Zoom call to Commissioner David Gooder, seems to refuse 39% oftheir overall trademark applications. After 2 years of prodding, Jason Lott, of the USPTO,a couple weeks ago said they have a new page about COMPREHENESIVE CLEARANCELEGAL RESEARCH – “And in news you might enjoy… Check out what just went live yesterday:
https://www.uspto.gov/trademarks/search/comprehensive-clearance-search-similar-trademarks
LegalZoom has the same problem as TradeMark Express.
We are both “Malcom in the Competitive Middle” operations.Can you imagine being middle priced for your services, where the competitive range is$35 to $6000, for what the business owning public perceives as all being LIKE services?!There are seemingly 2 dozen outright scams at the top of the Internet who’s fees rangefrom $35 to $300. Many are based in third World countries – beyond reach. They are hardto figure out because the one thing they have are great, well written web sites. Theirprices are too good to be true. People who are thinking exact domain names and exactGoogle/Yahoo/Bing searches and don’t want to hear any bad news are easy prey forthese “services”. It is all about the price. Even at $35 and paying $4 a click, it is profitablebecause it is so easy to sell an unknowingly BAD service. Think about it.
Here’s a sample of trademark scams the USPTO has compiled, on their ever growing list:https://www.uspto.gov/trademarks/protect/caution-misleading-notices.
Then there are attorneys who unarguably have that “duty and responsibility” I mentionedabove. The ones who do LIKE work with my TradeMark Express, (@ $700), and UrgentTrademark, (@ $1000), where most seem to in the $2500-$4000 range, per trademark.After all there is 8-10 hours of work, diligence, analysis and database costs. All theseattorneys outsource the comprehensive research to specialty research companies like us,Corsearch and Thomson Compumark at $900 and $1225 per trademark. Yes, there is agroup of attorneys who do their own research at the USPTO on a very recently diminishedversion TESS, as of November 30, as well as on the web. But, all that educated guessingto be able to attract small business startups amid all the bottom feeders at the top of theInternet, takes time too. I figure 90 to 120 minutes, but I cannot be sure. Even rural area
trademark attorneys make ~$200/hour. Big city trademark attorneys are at ~$500/hour.
Specifically about LegalZoom….finally!So, do you see the difficulty LegalZoom has in the trademark marketplace? They areforthright that they are not a law firm. In business since 2001, they have had to make surethe public knows they cannot give legal advice. It is al over their web site and when calledthey mention it then too. As a watchful competitor I can attest that LegalZoom haschanged the way they handle trademarks many times.
The messy little fact is successful trademarks need scrutiny of critical analysis to figure outif any given trademark is in fact legally clear. Their low priced model does not work fortrademarks. For trademarks, they have to give legal advice. So, they have a network ofattorneys as we do, but on a much bigger scale. They operate under the name of Pulse orLZ Legal Services.
When you call to inquire about a trademark, you will meet someone who is very nice whowill talk to you without interruption maybe because incoming calls are routed elsewhere.You may be on hold for a few minutes. Be ready to wait. They often close early too. Theywork from home. They will not transfer you to an attorney. You have to hire them first.Besides a very short script, they are there to attempt to answer questions and get youback onto the web site to order the $599 package – which is for a trademark application.The trouble is they do not know very much about trademarks. They never mentionresearch at all. You have to ask. When asked they are off script and it shows. Answersvary widely. The process can take a ridiculous 30-60 days, or 4-6 weeks to submit atrademark. Then an even more ridiculous 4 to 14 months for USPTO approval. Whenasked the length of a report we got answers from “1 to 10, quite a few, to 10-20, to 27 to50, 100 to 120 pages.
NOTE: as long as a client is responding, then processing a legally clear trademark shouldtake from a few days to 2 weeks. Also, the USPTO is taking 8-9 months to register a mark.Report lengths should be 600 to 800 pages. LegalZoom reports used to be even morethan ours, often times 800 to 1000 pages – BUT they were nonsensical in what they wereproducing. Their research strategies were way too broad, to puff up the report withirrelevant hits. Where they should have gone deeper where they should have, they neverdid. So, you can have a long bad report. Usually a tell of a bad service is short reports.This shows the cheaped out on the paid databases and they didn’t devise enough searchstrategies to cull out important information. Their attorneys charge extra fees to read morethan 10 pages of data. We could not get an coherent answer if this was for analyzing legalresearch or something outside research.
Yes, they have the prices. So, it is a tactical decision NOT to talk about the neededcomprehensive research. They were too consistent on this issue. If we didn’t ask aboutresearch it wasn’t ever going to be mentioned. FYI – their USA research is $199 for just aFederal search, $299 for a Federal, State and Common Law search. BTW, it is negligentto sell only a Federal trademark search to the public. It is only a 12% search. 3.5m/30mmarks.
LegalZoom has become to be deceptive. I do not say this lightly.
The LegalZoom web site is wonderful, like their commercials. However in lots of placeswhere they really should talk about the importance of research, they omit this information.See here:I found a trademark similar to mine. Can I still register it?Oftentimes no, because it could create confusion.But if the other mark is used for different products or services, it might be possiblebecause consumers may not be confused about who sells what.
For example, Delta Dental, Delta Air Lines, and Delta Faucet Company coexist asbusiness names because the products are different enough to prevent consumerconfusion.They make it seem like getting a trademark is as easy as going to the grocery store. It isodd that one page titled “Trademark Registration” has just 2 mentions of comprehensiveresearch. There are 5 mentions of search/research. They do not differentiate between fulllegal research and a simple preliminary search on the UPSTO’s TESS. See here:We’ll research it & report backYour attorney will perform a comprehensive trademark search to make surenothing similar is in use. If there are potential issues, we’ll search a second markfor free.
and
How to trademark a phraseUsing a distinctive phrase connected with your business—such as a slogan,motto, or tagline—can help improve your brand recognition. To prevent othercompanies from using your phrase, you can register a trademark for it—startingwith a comprehensive search. However, not every phrase can be trademarked,not everyone can trademark a phrase, and registration does not providecomplete protection. A trademark attorney can advise you on the best nextsteps for registering a trademark for your particular phrase.This page does not talk about the “comprehensive” research they offer at an extra price of$299. In 5 places an order button to “Register a Trademark”, all routed to to a summarypage:Trademark registration$599
federal fees‡Register a trademarkSet up your mark for success. With attorney help, you have a 94% chance ofregistering a trademark.†If your first mark gets rejected, we’ll cover our $599 fee to register adifferent mark§Have peace of mind knowing your attorney will research your mark, file foryou, and deal with minor roadblocksGet a free trademark search for a second mark if your attorney thinksthere’s an issue with your first choice.
Again, no mention there is more to it than the $599. No mentions of $199, (Federal only),or $299, (Federal, State and Common Law), are additional expenses. This you will learnlater after you hire LZ. The web site is built to skirt the issue, and minimally mention thebulk of the work they should be doing for your new trademark prospect.PROBLEM 1 – DECEPTIVE – The comprehensive clearance legal research is the key, theessence the absolute need of why you’d ever hire anyone to successfully secure yourfuture trademark. NOT talking about it gives the impression it is not important, a luxury anadd on, so therefore not really needed. It makes it seem that all there is too to getting atrademark is to hire them for $599 and paying the USPTO filing fee of $250 or $350 – assome mentioned.
PROBLEM 2 – BAIT & SWITCH- The energy is to get you signed up for $599 as fast aspossible. There is really nothing to talk about, except to go ahead and hire LZ asap. Thatis all that is needed. Once hired, then they start to cover their exposure to you by havinghave a talk with one of the trademark attorneys. The attorney will go over all the alreadyself submitted trademark. They then will recommend the $299 Federal, State andCommon Law research. Now research is suddenly important. No full disclosure here.
From experience most people do not read everything on a web site. When confirminginformation is intentionally omitted, then people will buck spending another $299. Theproblem is that the normal small business startup isn’t expecting this extra work, so IF theydo not buy it in the first place they will not be in the mood for a 50% upcharge then didn’texpect. Why wouldn’t a person think to themselves if the research was so important thenwhy wasn’t it stressed all over the web site, a web site that SEEMED so through? Whywasn’t the full actual fee stressed when I talked to the nice person? They were so nice. IFit was important why didn’t they mention it. The attorney just wants to make money. Itdoesn’t take a lot of imagination to envision the thought process of a startup going througha like thought process. A new business owner who wants to save every $ they can.
It was unclear how many days it took to hear from a LZ trademark attorney. Se heard 3 to5 days, but most just said soon. If the consultation wasn’t immediate then you can seewhy someone would definitely refuse $299 more for research.
Soooo, if the LZ web site and personnel said up front the actual fee was $898, becauseresearch is needed too, how would that impact their sales? The answer is right in from ofyou. The way they are doing it, a half shuffle disingenuous “bait and switch” works best.Sales are higher when approached just in this way. It isn’t about everyone being on thesame page from day 1, it is about getting that $599 where they can then sweep through asimple preliminary search – on USPTO’s TESS then doesn’t work anymore – and filing. Letthe chips fall where they may. No certainty.
PROBLEM 3 – Outright Dangerous Trademark Practices – Lastly, which logically followsLegalZoom’s initial under selling needed services and under performing their should betheir resulting work is a curious claim of a 94% success rate, as you see from a clip above.A high success rate If it were true. All you have to do is scroll down to see the fine print.
Take a look:†Based on filing two applications, each having an independent 75% probability of registration becauseas of March 19, 2020, 75% of our attorney-led applications that have reached final disposition(registration, rejection, or withdrawal) at the USPTO were successfully registered as trademarks.This statement may not bother you. But I know their lengthy, albeit scattered researchreports 3.5 years ago in 2020, were what we estimated to be 80% accurate. Now from thelightness of today’s research I can tell they are LESS accurate than in 2020. LZ is notpaying for all the databases they should and the research strategies are not happening.Otherwise they’d have MORE than a mere 75% success rate. We could not get an answerwhen asked to explain the term “attorney led”. Does this mean either preliminary researchor comprehensive clearance legal research or just comprehensive research?
Just below that footnote is more fine print:§If LZLS recommends proceeding with your trademark application and the application receivesa ‘final refusal’ from the United States Patent and Trademark Office, LegalZoom will waive itsservice fees for preparing a second application for a different trademark. Government filing feeswill still apply. Limit one waived service fee for a different mark per order. Trademark registrationvolume and success comparisons are to Trademark Engine, Trademarkia, RocketLawyer, andTrademark Elite, based on 2022 DocketTrak data.
This is yet more LZ double talk. What does “proceeding with your application” mean?Does this happen only IF you buy the $299 comprehensive research and it is deemed tobe clear, then your trademark is filed. Or, if just the poor Federal preliminary direct hitresearch is run at the $599 price and the trademark is filed?
To get to a “final refusal”, you have to fight the first refusal and lose your first argument tothe USPTO Examining Attorney. This means you have to pay one of their attorneys toargue the USPTO Office Action refusal. Yes, there are easy fixable Office Actions, butLikelihood-of-Confusion refusals can take an attorney 3-5 hours to argue. What is the feefor that 3-5 hours of work? Since their attorneys are in house they must know the cost toargue. At $250/hour, that is $750 to $1250 more in fees. Conservatively figured.
But wait, there’s more! There could easily be a recommendation to argue the secondUSPTO Office Action, (as you can argue up to two Office Action refusals). This meansanother $750 to $1250 attorney fee to argue again. I suspect though, as research is thefoundation of the mark – either skipped research or weak research – I’d conjecture therefusal was in fact a Likelihood-of-Confusion refusal. LegalZoom might just as soonrecommend going to name #2, that they promise they’d do for free =when you pay thenew USPTO filing fee of $350 or $250 per class.
However, be aware we are talking 12 to 15 months of time passing since the initial filing toget to this point with the USPTO. You will be well invested in whatever name, logo orslogan you started with where changing the name would be a BIG PROBLEM. The newproblem is that people don’t realize how utterly devastating it is to change names. Logosand slogans, not at all. Who cares? It is the name that is critical never to change.IF you choose to live under the radar, live in fear for the next ~9 years. Actual markowners have 10 years to find you and cease and desist your product or service to take thename back. You certainly will not go back to LZ for a second name. You’ll be frozen intime wondering what to do for 6 months. Again, name changes are absolutely devastating.Oh yea, because you filed a Federal trademark you now are a LOT easier to find to getthat cease and desist. There are trademarks on TESS from the 1700’s. All posterity isgoing to see that failed mark Public record. Any possible buyer of your business is goingto see the refusal when they do their diligence. Remember, this sad scenario happens to25% of LegalZoom’s clients.
LegalZoom does have its math right. A 25% failure x75% chance of another failure is 19%.Add 19% to the original 75% success rate, based on March 2020 stats, then = 94%. Forthose 19% it will be a rock road 2.5 years, double the USPTO filing fees and knowledge ofthe LZ attorney dog’s name. If you are in the 6% then you will be so beat up you’llprobably never open another business again. Nor will your kids, friends and ex-spouse.Capitalism loses.
BTW, LegalZoom has a subscription plan that is automatically charged monthly for either 6months totally $259 or 12 months for $469. LOTS of people complained also on Trustpilotthat this was very hard to cancel.
Additionally, when inquiring about incorporating, a non-profit and getting a fictitious name -none of the LegalZoom staff mentioned being clear at the trademark level first, beforeincorporation. There is nothing about this issue on the LZ website.