Were you thinking of making your brand or logo a trademark? I thought the same thing.
On one of my other websites, where I sell a product, I wanted to secure the name that I used on marketplaces and the title of my website. So I began the process of trademark registration. It did not go well. Could be that I was bamboozled, or it could be that I was just naive. I don’t know. It doesn’t really matter, the result was the same. I will describe my experience here.
Sometime last year (May 2022), I had the bright idea of trademarking my brand. I knew it was available because I did a quick trademark search at the USPTO (United States Patent and Trademark Office) and nothing turned up. So far, so good.
Next, I googled for a company that facilitates the process of trademark registration online. I picked the one that landed on the one at the top of the list, a company called Trademark Engine.
The initial charge was $350.00 for a USPTO fee collection. Then $49.00 for the trademark registration. I purchased a couple of add-ons: A Certified Copy ($99.00) and a Declaration of Use ($59.00). So now I am into it for $557.00 which is kind of a lot of money for me, but – like I said above – I wanted to lock it in and it seemed like a good idea at the time.
The online portal at Trademark Engine was minimal, especially for a newbie like myself, and I had to contact support to find out where to upload my “specimen” which is the name they use for your logo or whatever you want to trademark. The upload button on the instructions email brought me to the website but did not go directly to the upload area. I had to ask a couple of times before I got a response.
Their response was to cancel my order!
In retrospect, I should have let them cancel but I was excited to begin this process, so I wrote back and got un-canceled, and continued on. They did finally answer my question about how to upload, so I got it done.
I uploaded a screenshot of my website, a screenshot of my corresponding eBay store, and my actual logo, which is a text logo. Spoiler alert: it was the text logo that killed the registration, but I did not know that yet. And they did not bother to let me know that a text logo was unacceptable.
Eventually, I received confirmation emails that my specimen had been submitted to the USPTO, and I figured everything was good to go. I also received a confirmation that I could start using the “TM” trademark symbol next to my logo. It was not necessary, and it was not visually attractive, so I opted not to do that.
In January 2023 I received a notification that my trademark was in the database and was now searchable. I tried it, it was. Cool!
Then the emails from trademark attorneys started coming. These were not lawyers representing someone else, and nothing about trademark infringement or anything else scary like that – these were solicitation emails. I started saving them, to see how many I would get, and at this writing, I have received about 50 emails within the space of 5 months, so 2-3 a week roughly.
In March of 2023 I received an email from the USPTO – Office Action Needed. And here we go. There were a few things wrong with my specimen.
SUMMARY OF ISSUES that the applicant must address:
• Section 2(e)(1) – Merely Descriptive
• Identification of Goods Amendment
• Specimen Unacceptable – Substitute Required
I was very disappointed, and a little bit pissed off. These were all issues that I expected Trademark Engine would have addressed and corrected before submitting my application. In fact, they did address them, I corrected them, they approved them, and they sent it off. But the actual USPTO rejected them.
I – of course – emailed support at Trademark Engine, and asked them WTF! in so many words, not that actual phrase, but close enough. This is the response I received:
Hello, and thank you for contacting Trademark Engine!
According to your Office Action coming from the USPTO (US Patent and Trademark Office), you have issues with Section 2(e)(1) – Merely Descriptive, Identification of Goods Amendment and Specimen Unacceptable – Substitute Required but apparently upon checking we do apologize but we can’t assist you in responding and you didn’t pay for the Office Action assistance on our end. In that case, we highly suggest that you may consult a Trademark Attorney for assistance in regard of your Office Action.
I did write back to argue with them that they should have done more, and I got the following final email:
Hello, and thank you for contacting Trademark Engine!
Here on Trademark Engine, what we do is just assist you in processing your application, the decision in approving or denying your application is not ours, it is up to the USPTO or US Patent and Trademark Office. We do apologize if this information wasn’t clear. In regards to your Office Action what we highly suggest is to consult a trademark attorney due to the fact that we can’t assist you and we are limited to assisting you with these issues.
For any further questions, feel free to contact us. Have a wonderful day!
Of course, the solicitation emails from helpful trademark services ramped up, all basically stating the same pitch ‘We see you have an office action that expires in ___ days. Hire us to get your trademark approved, click here to get a quote ‘ …they all said the same thing, in different ways. Some were friendly, some were ultra-serious, and some were not even attorneys, but paid services. They all smacked of ‘ambulance-chasing’.
I do not know if Trademark Engine sold my information to these trademark attorneys and services, or if anyone is able to search applications that have office actions pending on the USPTO website.
But at this point, I was done. I’d already spent enough, more than I could afford. I was not about to throw more money at this deal. And that is where I am today. The deadline for response is June 14, 2023, which is the middle of next week.
Lesson learned? Next time – if there is a next time – I will go straight to the USPTO.gov website and cut out the middleman. Wish I had started here.
I will update this post when the deadline passes. As of today, my trademark is still searchable, and active.
UPDATE July 15, 2024 (a year later). Yeah, it’s dead.
