November is a great time to be thankful for the assets you’ve built, and a smart business owner knows that the intellectual property (IP) protecting their unique creations is one of the most valuable assets of all.
But once you’ve invented that brilliant gadget or coined that killer brand name, who do you hire to protect it? The choices can feel like a maze, full of shadowy corners and false promises. Should you DIY and brave the journey alone? Rely on a map from a cheap online service? Or hire an experienced intellectual property lawyer as your seasoned guide?
The cost difference seems huge upfront, but I’ve spent over 25 years as a lawyer watching that initial savings turn into a financial catastrophe down the road.
Today, I’m leading you through that labyrinth of confusing options to show you four specific, high-stakes mistakes that only a licensed attorney can prevent, proving why the cheap path often leads to a worthless asset and spending more in the long run. I’ll also cover how to choose the right lawyer or law firm to help you.
Part I: The Three Paths to Protection
Before I expose the fatal flaws, let’s recap the three primary paths small business owners consider:
- The DIY Approach: Filing applications yourself based on information from the USPTO website.
- The Automated Horror Show (Online Services): Services like LegalZoom or Trademark Engine that prepare and submit forms for a low flat fee. They are not law firms and cannot provide legal strategy.
- The True Counsel (Hiring an Attorney): Securing a licensed IP or Patent Attorney (like a solo or small firm) who provides strategic advice and technical drafting.
The danger lies squarely in paths 1 and 2. They allow you to complete the paperwork, but they often leave the actual protection fatally compromised.
Part II: The Four Fatal Flaws an Attorney Can Prevent
1. The Claims Killer: The Fatal Flaws of DIY Patent Language
A patent is a highly technical, legal document. The claims (the part that defines your legal rights) must be drafted with precision. That’s because in a patent, the claims define the legal boundaries of your invention. If the claims are bad, the patent is worthless.
- The Flaws:
- Calamitous Claim Language. Claims must be written in a technical way that arrives at a balanced, Goldilocks-approving not-too-broad and not-too-narrow definition of the invention. Non-attorneys (DIY or online services) often write claims that are merely descriptive of the product’s function, or that simply describe the preferred embodiment (the best way the inventor built it). This is a technical, legal, and difficult -if-not-impossible-to-fix mistake.
- Dismal Descriptions. The law requires the patent claims to be supported by a written description that satisfies $35$ U.S.C. $\S 112$. That means everything in the claims must be supported by the written description of the invention in the patent application by being mentioned specifically, in consistent terminology, and in context with the other parts of the invention. DIY and online services often produce a description that’s simply inadequate to support the claims. Also, everything claimed in a nonprovisional application must be supported by something in the provisional application in order to use the provisional application’s filing date, which is the main point of having a provisional application. It’s easy to overlook content that should be included in the provisional application.
- Maybe Misleading: Not all online services are swindles. Some are, but most of the long-established ones offer some legitimate help. Whether that help is what you need or worth what you pay for it is something more subjective. Here are my takes on some common online services. I’m not saying they are scams. I’m just saying be careful and be informed about what you’re truly buying and what you’re not buying. These services have sometimes worked well for some people, but a good online search for their reviews is a smart move, and that goes for any lawyer or legal service you’re thinking of using.
- InventHelp advertises on news shows and daytime TV and charges thousands of dollars to give you “marketing assistance” that my clients who used them first said was nearly useless. They don’t even offer patent application services. You just pay them to refer you to a “more affordable” patent attorney. Why pay for that when you could find one yourself for free? Also, disclosing your invention to the service can result in public disclosure that starts that 12-month filing window clock that many inventors don’t even know exists. These services tend to keep that issue pretty quiet. The New York Times reported in 2016 that less than half a percent of InventHelp’s clients got the results you’d expect: “Of the roughly 6,000 clients who have signed agreements with InventHelp in the past two years, only 153 have successfully obtained license agreements for their products, company officials said, and only 27 have wound up making enough in profits to recoup what they paid for InventHelp’s services.” (https://www.nytimes.com/2016/02/28/nyregion/the-arbiter-of-invention.html)
- LegalZoom’s “patent practitioner”-assisted patent application service is, for their advertised prices, essentially document preparation with brief advice. Note that I didn’t say “legal advice,” and that’s because sometimes that “patent practitioner” will be a patent agent who CAN’T give you legal advice. Their application services are extremely limited in terms of number of pages, drawings, claims, and revisions. If you pay for a utility patent search, you get a report and then they only assess a whopping 3 prior art references chosen by you. They don’t even guide you as to which ones you should focus on. In their utility patent services agreements, they fully admit that, “Only a cursory inquiry is made into the details and scope of the invention; thus, important aspects may be overlooked by you and/or Practitioner.” They also admit that “There are various limitations on page length, number of drawings, number of claims, and number of drafts in the Limited Services. This could be disadvantageous to you.” You can contract with the attorney or agent for additional service, but that’s likely going to bump you up into a fee level closer to what you would have paid a patent attorney or agent in the first place, so you may as well just hire one you choose yourself at the start and get more personalized service at the level of detail you need. You can see for yourself exactly what is and isn’t included at https://www.legalzoom.com/tos_designpatent.html (design), https://www.legalzoom.com/tos_prov_patent_a.html (utility provisional), https://www.legalzoom.com/tos_utility_1_b.html (utility step 1), https://www.legalzoom.com/tos_utility_2_a.html (utility step 2),
- Fiverr. I feel like I shouldn’t have to explain why hiring a lawyer on Fiverr is a terrible idea, but here we go. First and most importantly, there is no guarantee that the person you hire is (1) who they say they are or (2) a registered patent attorney or patent agent. Now, if you use their “pro services” option where there is at least some vetting of the providers, you’ll notice there are NONE who offer patent application services.
- Government Guidance. The Federal government urges caution. Here are links to what the FTC and the USPTO have to say about online services and protecting yourself against the worst of them, as well as what to do if you were swindled. https://consumer.ftc.gov/node/78355; https://www.uspto.gov/patents/basics/using-legal-services/scam-prevention
- The Disaster:
- Pointless Provisionals: If the description and drawings in your provisional patent application aren’t thorough enough, you won’t be able to get the advantage of claiming priority to its filing date. Everything in a nonprovisional application must be supported in the provisional application in order to use its filing date. It’s often difficult to make that happen without attorney or agent guidance.
- Careless Claims: If your claims are too narrow, a competitor can easily make a minor change to your design and legally design around your patent. If your claims are too broad, the USPTO rejects them as being precluded by existing prior art, wasting years of your time and thousands of dollars in fees. It’s exceedingly difficult, and sometimes impossible, to change the claims once they’ve been submitted. Certain changes are allowed, but they may not be enough to rescue the application.
- The Attorney Solution: A patent attorney (who like a patent agent has a technical background but also has a legal background a patent agent doesn’t have, and who can give you legal advice, whereas a patent agent is not allowed to) is trained to draft claims that are broad enough to cover potential infringement yet specific enough to be novel. THIS IS HIGH-STAKES LEGAL DRAFTING, AND IT DESERVES TO HAVE A SKILLED PRACTITIONER DO IT.
2. The Trademark Zombie: Why a Bad Search Dooms Your Brand Before It's Born
A trademark must be unique, and making sure it is before filing an application requires a thorough clearance search. The most frequent mistake here is an incomplete or non-strategic search. A proper trademark search considers not just identical registered marks, but also similar marks that are confusingly similar in sound, appearance, or meaning, and that are used with related goods or services. Many DIY filers also incorrectly identify the legal owner or use an overly narrow description of their goods/services, which can be a non-fixable mistake that requires starting over and wasting all your initial filing fees. These kinds of mistakes result in Trademark Zombie applications: filings that look alive but have no legal substance.
- The Flaw: Many DIY applicants don’t do any search or just search the USPTO database. The problem with only searching the USPTO database is that it only contains applications and registrations. The thing is, your brand can also be blocked by common law rights, which are unregistered marks already in use. If a nearby competitor has been using a confusingly similar name for a year, they may be able to stop you from even using your federally registered mark in their region. Cheap online services also often check only the federal USPTO database for exact matches. Some do more through an AI-only search, but then they give you the results without a thorough analysis and explanation of the results. Let’s look at some of the popular online services like we did for patents.
- LegalZoom. Just because plenty of people get their trademarks registered through LegalZoom doesn’t mean the registration is good. I just checked their website, and they don’t appear to have a DIY service anymore. They only have an attorney-assisted service. That’s good. If you have to use an online service, LegalZoom is probably your best bet. However, let me tell you a story about a client of mine who began using their attorney-assisted service.
My client owns a restaurant and sells some sauces to go, as well as shirts and hats with the restaurant logo on the front. He sells the hats and shirts online as well. He wanted to start selling the sauces and some other products in grocery stores as well. He hired LegalZoom’s attorney-assisted trademark service. The attorney ran an AI-assisted search. It’s not a bad search, but the attorney didn’t seem to have also done any manual searching, which is still necessary since AI isn’t perfect. The attorney gave a reasonable assessment of the results. Here’s where we get to the problem. The attorney advised my client to file in class 25 for the shirts and hats and class 30 for sauces. He got class 30 correct. Class 25 was not proper because the client’s use of the logo on the shirts and hats was merely ornamental, only on the front, not on the tag or other brand identifying place. That class would have been rejected. The worst part is the lawyer didn’t suggest my client file in class 43 for restaurant services, despite restaurant services being the core of my client’s business! The client felt uncertain about the advice, not knowing just how bad it was, and came to me for advice and actually doing the application.
-
- Trademark Engine. Don’t. Just don’t. Especially their basic package. Learn a little on the USPTO website and do it yourself instead if you can’t afford a lawyer. They have an F rating with the Better Business Bureau. Customers report the final cost being much higher than expected due to unexpected fees. You can see the consistent complaints at https://www.bbb.org/us/tx/houston/profile/trademark-consultant/trademark-engine-llc-0915-90044544.
- The Disaster: You file your federal trademark application, spend money on branding, spend time building your brand, and then receive a cease-and-desist letter from a company that has been using a confusingly similar name in your region for five years. They can block your federal rights locally, exposing you to an infringement lawsuit. Worse, you receive a cease-and-desist letter from a national business that has a confusingly similar mark for similar goods or services. Then you have to rebrand, and often quickly, rather than at your own pace.
Then there’s this kind of application, which is utterly doomed from the start because the lawyer, who is a business lawyer and NOT a trademark lawyer, filing it had no idea how to fill out the application properly (honestly, I thought it was a DIY application because it was so flawed): https://tsdr.uspto.gov/#caseNumber=97001057. The applicant, where you are supposed to put the mark, put “THE WORD “LAKE” IN ALL CAPS FEAUTRED HORIZONTALLY WITH THE WORD “JUNKIE” LOCATED AND CENTERED BELOW THE WORD “LAKE”. THE LETTERS OF EACH WORD ARE DESIGNED BLOCK-STYLE, THICK IN SIZE, AND HAVE ANGLED, STRAIGHT EDGES SUCH THAT NO EDGE OF ANY LETTER IS COMPLETELY HORIZONTAL OR VERTICAL. EACH LETTER IS FILLED WITH CUTOUT SECTIONS TO IMITATE THE MOVEMENT OF WATER IN A WAVE-LIKE PATTERN SPORADICALLY PLACED THROUGHOUT EACH LETTER. THE WAVE RIPPLES RUN HORIZONTALLY.” What she should have done is selected an image mark application instead of a text mark application, submitted an image of the mark, and put that description in the “description of image” field. Her specimens of use also only showed ornamental use and would have been refused, and they didn’t even all match the description. This is why I say use a lawyer who does trademarks as a core part of their practice!
- The Attorney Solution: An experienced licensed trademark attorney performs a comprehensive legal analysis that searches federal and some state registrations, domain names, social media, business directories, and general use on the internet, looking for not just the obvious potential problems but also the ones that are nuanced, mitigating the risk of being ambushed by a prior common law user. This strategic search is the necessary due diligence that protects your investment. An experienced trademark attorney will also know the correct classes of goods or services to file in, the proper specimens of use to file to prove your use of the mark in commerce, and how to navigate a host of other small but crucial nuanced issues.
Note that I said use an experienced trademark attorney to do this. Your business attorney who dabbles in trademark applications doesn’t have the experience with the nuances with trademark law any more than your trademark lawyer has experience with the nuances of corporate mergers. It’s like asking a heart surgeon to do brain surgery. They may do ok, but do you want to risk it? Recall the example I gave in the disaster part of this section.
Many trademark attorneys, including me, offer a DIY-assisted service that includes actual legal advice and making sure your application doesn’t contain any flaws that would obviously be a problem for registration. Sometimes that will include a quick search to check for identical hits in the USPTO database and in general online use. You can also try to find an intellectual property law school clinic near you that may be able to help.
3. The Copyright Trap: Filing Too Late to Claim Your Full Damages
All right, content creators! You know your digital painting, script, or video is protected the moment you create it. But if someone infringes it, do you want to recover $50 in lost profit, or do you want the full weight of the law on your side?
Copyright is automatic upon creation, but that initial protection is weak in a fight. You must register to secure your full legal remedies.
- The Flaw: Creators, especially online streamers and podcasters, often wait until they are being infringed to file their copyright registration.
- The Disaster: To be eligible to recover statutory damages (up to $150,000 per willful infringement) and attorney’s fees in a lawsuit, you must register your work before the infringement occurs OR within three months of its first publication ($17$ U.S.C. $\S 412$). If you miss this deadline, you are usually stuck proving your actual damages (lost profit), which is often impossibly difficult and costly.
- The Solution: You can consult a copyright attorney before you create something, or right after you do. We advise you on the legal definition of “publication” and ensure your filings are timely and correct. We help you strategically use cost-saving options like Group Registration for a series of works to preserve your rights to the most potent remedies the law allows.
Here’s the nice part about copyright registration, though. You don’t necessarily need an attorney the way you do with patents and trademarks. The copyright.gov has wonderful training and educational materials designed to help creators be able to handle their own copyright registrations. Why? Because creators often need to register many, many works. Maybe hundreds or thousands (think of how many a professional photographer would need to register). Paying an attorney to handle all of that just isn’t feasible for most creators. If you really feel nervous about DIY, and it’s not something you’ll do often enough to become comfortable with it, by all means use an attorney. If you’re going to need to register works often, though, perhaps hiring an attorney to show you how would be worthwhile.
Without timely registration, you might be stuck proving every penny of your actual damages, which can be nearly impossible and make the cost of litigation prohibitive. Don’t fall into the trap. Ensure your copyright registration paperwork is filed on time to secure the highest level of protection for your creative works.
4. Who Owns the Asset? The IP Time Bomb in Business
This is a business law issue that can have devastating IP consequences. When you start a business with a co-founder, friend, or partner, who legally owns the brand, the software, or the product idea? If you don’t have a legally binding agreement about it, the default answer is usually “everyone who created it,” leading to an expensive legal time bomb. That’s just the beginning of the horror.
- The Flaw: When forming a business with a partner (LLC or partnership), founders often use a basic, generic operating agreement (often provided by online formation services) that fails to explicitly assign IP ownership to the business entity, fails to detail what happens if an owner leaves or dies, or fails to have any details about IP ownership at all.
- The Disaster: If a partner or member leaves, is fired, or passes away without IP rights being addressed properly in the operating agreement and any necessary assignments or licensed, they (or their heirs) may legally claim co-ownership of the business name trademark, the patent rights for your main product, the copyright of the content on your website, or the proprietary recipe behind your wildly successful cupcakes. This is a legal time bomb that can effectively kill your company in a hostile ownership dispute.
- The Attorney Solution: A business lawyer drafts a custom operating or partnership agreement that includes specific, mandatory language requiring all intellectual property related to and important to the business. This keeps those assets secure, regardless of personnel changes.
Part III: How Do You Find the Right Intellectual Property Professional?
Hiring a licensed patent or IP attorney is the strategic, professional practice that minimizes risk and maximizes the value of your assets. But the choice is still complex: Solo/Small Firm vs. BigLaw/Large Firm.
|
Attorney Option |
Solo/Small Firm (like KPL!) |
Large Firm / BigLaw |
|
Typical Hourly Rate |
$250 – $450/hour (Often offer flat fees) |
$500 – $1,000+/hour |
|
Client Type |
Creative entrepreneurs, startups, small to mid-size businesses |
Large corporations, institutional clients |
|
Focus |
Efficiency, direct communication, holistic business/IP strategy |
Depth of resources, litigation, complex global portfolios |
|
The Vibe |
Personalized, responsive, understands budget constraints |
Formal, structured, higher overhead |
Patent Attorney vs. Patent Agent
It’s vital to know the distinction.
- A Patent Agent has a technical degree and has passed the patent bar exam. They are authorized to prepare and prosecute patent applications before the USPTO.
- A Patent Attorney has also passed the patent bar exam and is authorized to prepare and prosecute patent applications before the USPTO but has additionally completed law school and passed at least one state bar exam.
The Difference: An attorney is a fully licensed lawyer and can provide legal advice on strategy, infringement, licensing, contracts, and litigation risk. An agent cannot advise you on related legal matters (like drafting your NDA or licensing agreement), which are often critical to protecting your invention. For the creative entrepreneur needing a full suite of business protection (patent, trademark, copyright, and business contracts) a patent attorney is the essential partner.
The Takeaway
A solo practitioner or small IP firm is often the sweet spot for small business owners. You get the benefit of a seasoned, licensed attorney (like me with my over 25 years of experience) with the flexibility and cost-efficiency that BigLaw simply cannot offer. And unlike online services, you get a partner who understands your short- and long-term business goals, not just a document filer.
Once you’ve narrowed down the size of the firm you want to work with, finding the specific firm or attorney requires some work. Getting a referral from someone you trust is a good way to find a good attorney. Doing an internet search and looking at online reviews is smart, too (just make sure to look at the actual reviews and any responses, not just the star rating). If you find some that look like good options, visit their websites, and see what the vibe is. Do you want a firm that’s been around for 150 years? An all-woman firm? A traditional suit-and-tie at all times lawyer? A “non-stuffy” attorney? An attorney who loves rock and roll, punk rock, and horror movies? There are lawyers and firms out there to match with any of your preferences.
Conclusion: Choose Your Guide Wisely
You can’t afford to treat your valuable assets like a low-budget horror flick. Choosing your IP counsel isn’t a place to pinch pennies. The money you “save” on a cheap service is often dwarfed by the cost of fixing an application error or, worse, realizing your final patent or trademark is too weak to actually defend your business.
Choose a partner who brings years of the right experience and strategic foresight to the table. Don’t let your business’s most valuable assets become the victims in a horror story.
Intellectual property is one of your most powerful business tools. If you’re ready to build a strong brand and protect what you create, you don’t have to figure it out alone.
I help entrepreneurs across the U.S. make smart, legally sound decisions about their intellectual property. I’m an attorney in Champaign-Urbana, Illinois, but I serve intellectual property clients nationwide.
Ready to protect your work? Book a consultation online at kingpatentlaw.com or call 217-714-8558.
For more information on intellectual property and business law, check out the other posts on this site, listen to my podcast “Spellbinding IP: Patent, Trademark, and Business Strategy” on all major podcast platforms (video available on YouTube, Spotify, and Substack), or follow me on social media at @kingpatentlaw.
Avoid the legal horrors, and keep rocking your IP.
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