5 Questions to Ask Before Hiring a Trademark Attorney
Not all attorneys are created equal.
The trademark process can be long and expensive, so finding the right attorney from the start saves thousands of dollars and months of time.
I recently sent out an email to clients who have been through the trademark process to ask what they would tell other entrepreneurs about choosing a good trademark attorney. Here's their advice:
1. They should take you and your business seriously
This was the most common answer among all my clients. A feeling that some attorneys didn't respect them or their company. A beauty brand owner told me that she walked out of an attorney's office after he called her six-figure brand "a cute hobby". Her rationale? If he didn't see the importance of the company, he wasn't going to put up a fight to protect it.
To Ask: How would you describe my company?
2. They should know trademark law
You wouldn't believe how many attorneys try to file a trademark application for their own law firm...and fail. Trademark law is an area of law that is notoriously complicated and difficult. It's not something that every attorney can do. If they can't even file a trademark for themselves, how will they do it for your company?
At a minimum, your attorney should know the US Patent and Trademark Office Examiners Manual. It's what the trademark examiners will use to review your application. If you've been to our office, you'll recognize it as that gigantic pink book sitting on my desk.
They should also have a list of brands they've successfully trademarked. Once a trademark is filed, it's public knowledge so there's no reason they can't tell you.
To Ask: What other brands have you trademarked?
3. They will tell you that your application won't be approved
There are some words that cannot be trademarked and some applications that won't be approved because of similar existing trademarks. You need an attorney who can tell you that right away so you don't waste your time and money on an application that will be denied.
Unfortunately, many attorneys and legal websites will file any application that you want without telling you whether it's likely to be approved or not.
One client said that her original brand name was a popular word that couldn't be protected. But she she went to a legal website, paid the fees, and waited 6 months to find out that it was, of course, denied by the trademark office. She came to our firm and now she has a new brand name and a trademark to match.
To Ask: How likely it is that my trademark will be approved?
4. The price should include office action responses
The majority (84%) of trademark applications receive something called an Office Action. An Office Action is a legal proceeding where your application needs to be amended. You'll need to send a timely response that convinces the attorney to approve your application based on the law.
Many trademark attorneys and legal websites don't include Office Action responses in their initial trademark filing fees. This is an easy way to trick clients because they think they're getting a great deal, not realizing they'll end up paying a lot more when they inevitably need an attorney to send an Office Action response. To avoid that, our trademark filing service automatically includes sending Office Action responses.
To Ask: How do you handle Office Action responses?
5. They should keep you updated after filing the application
A trademark attorney shouldn't stop working when the trademark application is filed. They need to keep track of where your application is in the approval process, respond to any office actions by the due dates, and monitor your publication. The entire process is very time sensitive. You only have a limited amount of time to respond to certain events before your application is denied.
To Ask: How will you update me along the way?