While there may not be as many trademark attorneys as there are dentists, there are enough to make you wonder: Am I working with the best? What is their experience? How would I even know? When evaluating potential candidates, many factors must be considered. After all, this person is being entrusted with a high level of responsibility.
Choosing the right Trademark Attorney isn’t easy, checking these seven things can help you make the right decision…Your trademark attorney should:
- Accurately assess trademark similarities and infringement risks.
- Proactively reduce the likelihood of opposition during the application process.
- Do their due diligence to help you avoid receiving a “cease and desist” later on.
Though such grievances are usually resolved prior to trial, a potential trademark infringement lawsuit is not something you want to mess around with.
In this article, we’ll review seven questions to ask when interviewing trademark attorneys. Keep in mind, this list is in no way definitive. Partnering with an attorney who understands your industry is always important.
Seven Questions to Ask a Trademark Attorney
- What is your experience level in dealing with trademark law?
As with other professions, attorneys often specialize. While it isn’t necessary to find one who works exclusively with trademark law, it is important to find one with the experience level you need.
While most lawyers will understand how to register a trademark, fewer will be familiar with the technicalities involved in the search and clearance process. Find someone who:
- Can search for new and available marks on your behalf.
- Understands all of the factors that go into making a trademark “high risk.”
- Understands the specific requirements involved in global marketplace registrations.
- Understands how to appropriately handle oppositions, revocations, and invalidations.
- What databases do you use to assess risk?
No reputable trademark attorney will rely on free databases alone as they lack the functionality needed to make comprehensive assessments. While government databases can determine if your exact candidate is already in use, they cannot evaluate phonetic or visual similarities. They also provide no warnings as to cultural and/or linguistic misinterpretations (very important when marketing internationally).
- What are your fees?
An attorney’s fees will vary depending on how quickly you want results. Expect to pay significantly more for what is considered a fast turnaround (1-2 days). Otherwise, typical turnaround time is about a week.
Fees will also depend on the size and complexity of your business. Whereas a “mom and pop” can get one name comprehensively searched for a few hundred dollars, a branding agency is more likely to spend thousands of dollars for two to three name selections.
You will want to ask some more specific questions.
- What are your fees for filing the trademark application if my candidate is good?
- What are your fees for conducting an additional search if my candidate is bad?
- What are your hourly rates for handling possible office actions (e.g., oppositions)?
- What are your fees for watching a trademark once it’s finally registered?
And, since you’re paying all those fees, you definitely want to make sure your attorney is conducting as thorough a search as possible. So, ask the following questions:
- Do you search common law databases?
Common law rights are automatically granted to trademarks used without federal registration in the United States. They extend to whoever can prove first actual usage in commerce.
The United States is considered a “first in time, first in right” country. So long as money has been exchanged for a product or service (and first use can be proven), a trademark is legally protected by the state’s court. Meaning, a business doesn’t have to register its trademark to receive first priority of use in its geographic area.
So, even if your company is bigger and more profitable, you could still find yourself on the receiving end of a “cease and desist” from a local business if you haven’t covered your bases.
- Will you proactively search regions outside of where I’m registering?
Most attorneys will expand the scope of your search for an additional fee. If your company is the slightest bit interest in international commerce or simply wants to maintain a U.S. Internet presence, you’ll want to cover your bases.
- Will you search app store databases?
No modern trademark clearance search is complete without checking app stores for similar trademark usage. According to the Pew Research Center’s Internet & American Life Project, half of all adult cell phone owners in the United States have apps on their phones.
By 2017, an estimated $268 billion downloads and $77 billion revenue will be made in apps.
- How does your trademark watch process work?
Once you’ve done all that work to register your mark, it’s important to monitor for potential infringement. Attorney fees for watching trademarks can vary widely.
Don’t be afraid to press your attorney, asking for an overview of the monitoring service that they can provide.
The trademark search, clearance, and registration processes involve highly specialized, time-consuming tasks. That’s why you need to outsource the work to experienced, qualified, IP professionals, who can advise you appropriately and save you time and money during your search for a new brand name.
*This is an informational opinion article of the author. The views and opinions expressed in this article are those of the author and do not necessarily represent official policy or positions of Corsearch or its clients.