Last week, I received a telephone call from a guy located in Florida who was on the verge of opening a new business. Apparently, he was thinking about using LegalZoom to assist in the preparation and filing of his trademark application. For those of you who don’t already know, LegalZoom is an online legal document preparation service. It is not a law firm and it cannot offer any legal advice or guidance. People who are looking to register a trademark with LegalZoom (God forbid) are asked to fill out a questionnaire that resembles the official trademark application form provided by the Trademark Office. They submit their responses to LegalZoom with a payment that covers LegalZoom’s service charge and the government filing fee for the application. Without checking for accuracy or completeness, LegalZoom transcribes the responses onto the Trademark Office’s official application form and submits it on behalf of its customers. There is absolutely no review by LegalZoom as to whether the trademark is even eligible for registration, which is a problem considering that there are many categories of trademarks that are completely barred from being federally registered.
Anyway, as my potential client was conducting some Internet research into LegalZoom and its trademark registration service, he happened to stumble across three of my previous blog posts in which I detail the many problems with LegalZoom and the reasons why people should avoid using LegalZoom like the plague. After I was done patting myself on the back for having such awesome search engine optimization, I started asking him some questions about his trademark and his business. He indicated that he was going to be starting a website on which people can purchase clothing and other merchandise that have funny, amusing, and/or distasteful sayings printed on them. Because the name he was considering using was pretty unique, he was concerned about competitors adopting a similar name with the intent to capitalize on any success and good fortune he may have. He had heard LegalZoom’s commercials on television and satellite radio and decided to check it out. And as I mentioned earlier, his research into LegalZoom led him to your humble trademark attorney. I guess I was able to make him doubt LegalZoom just enough to consult with me before handing over $494 to LegalZoom.
Well, I think he’s pretty happy that he made that phone call because I just saved him $494. Under the Lanham Act (which is the primary federal trademark statute dealing with trademark registration), a trademark that “consists of or comprises immoral, deceptive, or scandalous matter” may not be registered with the Trademark Office under any circumstances. The trademark my potential client wanted to register prominently featured a well-known and highly profane term. Without going into too much detail, let’s just say that the word appears in George Carlin’s original list of “Seven Words You Can Never Say on Television.” A very quick search of the Trademark Office’s records revealed that every single trademark application ever filed with this particular word had been rejected by the Trademark Office on the basis that the mark would be considered immoral or scandalous by a large segment of the American public. As such, I informed him that there was an extraordinarily high probability that the Trademark Office would treat his application in a similar fashion and that the chances of overcoming such a rejection would be practically non-existent. Although he wasn’t thrilled about the inability to register his trademark, he was grateful that I saved him a few hundred dollars and even offered to send me some money for my time and advice. I told him I’d just count it toward my pro bono hours for the year. After all, didn’t I just do a public good by bringing LegalZoom one step closer to bankruptcy? You’re welcome America.
The fact of the matter is that LegalZoom would have done nothing to dissuade my potential client from filing his trademark application. Why? Because nobody at LegalZoom has a clue which trademarks are entitled to federal registration and which ones aren’t. It would have happily pocketed the money and laughed all the way to the bank. And where would that have left this budding entrepreneur? I’ll tell you where. $494 in credit card debt and a trademark application that isn’t worth a $@#!.