Weekly take: Why DIY trademark courses are at risk of breaking
Inexperienced business owners should be wary of ‘simple’ DIY trademark solutions and opt for an attorney instead
I’ve written before about the annoying side of LinkedIn and how people use the site as a platform for their boasts, general inane musings, or, worse still, family photographs.
That still happens of course, and although incredibly annoying, I suppose it’s not doing any harm (other than to my sanity).
However, a lawyer’s post this week has prompted me to discuss another, potentially dangerous, issue – misleading claims and adverts.
Trademark attorney Rachel Harrison, who runs a firm called Rheia IP in the UK, noted that she had seen a post by a UK-based “business lawyer” purporting to offer an affordable five-day course in which business owners will be taught how to trademark their business name.
Attendees could start (and potentially finish) the process in that time frame, the advert said, according to Harrison.
The referred-to ad is not an outlier either.
I have seen a fair few posts from either business “consultants” or former “lawyers” (not necessarily intellectual property specialists) who are either no longer regulated themselves or run unregulated businesses/courses on the side offering IP advice.
The unregulated aspect is key because, even though the ‘consultants’ or ‘lawyers’ running these cases may well be honest in their intentions, there will be no form of recompense for attendees if something were to go wrong.
Crucially, a lawyer is a general term used to describe someone who provides legal services. Unlike terms such as solicitor or attorney, lawyer is not a regulated term and so anyone can call themselves one, regardless of whether they have professional qualifications or not.
The posts in question all offer a similar thing – affordable advice, and a simple how-to guide for trademark prosecution.
The aim of those who offer these services is obvious here: don’t use a regulated solicitor or attorney, as the costs for something relatively simple are not worth it. The implication is that it is too expensive.
But if you are coming into the trademark application process blind, as many people are, the cost of getting the necessary advice from a regulated IP specialist is almost certainly worth it.
Let’s look at some of the potential issues with the claims made in the post that Harrison encountered.
Notwithstanding that it’s impossible to get a trademark within a week (Harrison points out that in the UK applications are open to third-party challenge for two months), there are other issues.
For example, I worry that this simplification of trademark law will lead applicants to a false sense of security.
Yes, they may be able to apply for a mark relatively easily, but the less due diligence that goes into an application the more likely it is that an applicant will run into hurdles during the subsequent prosecution process.
Any costs saved on bypassing a solicitor or attorney (more on that later) for the application could easily be lost in responding to oppositions or subsequently being forced to tweak the application.
Further, if an applicant pre-emptively starts to use their mark during this process, perhaps under the false impression that they will imminently be granted a trademark, then there could also be re-branding costs to contend with.
A sensible and pragmatic search and due diligence process would avoid this.
However, I suspect this is not something that can easily be taught on a DIY trademark course.
I’m not suggesting these types of courses are cons, and I’m confident they are not in the same category as those dangerous scams that ask for trademark renewal fees.
In this instance, I believe attendees are given vital information about how to apply for a mark.
There is a good case for improving knowledge of what IP is available to parties and how to get it.
But there is a real danger of potential attendees being oversold on the outcome.
I’m fully aware that for some, mostly larger, firms this type of work (trademark prosecution) is often passed on to junior staffers or managed from offices in lower-cost locations.
You could argue, then, that it's perfectly reasonable for someone with a broad knowledge of the area to provide useful tips for a cheaper price, and I’d be sympathetic to that opinion.
But consider smaller firms for whom prosecution is their bread and butter.
These courses and businesses will undoubtedly take work away from those firms which, incidentally, are packed with talented attorneys who could offer a first-class service and probably for a more reasonable price than you might expect.
So, the next time a business owner sees a potentially appealing course promising them a trademark in one week, they might want to stop and check with an attorney first.