For most established businesses, the most important asset is its brand. When one considers some of the most prominent brands today, it becomes clear that without the exclusive use its owner enjoys over it, by virtue of trademark laws, all goodwill that the business benefits from is lost. Whether its the main company brand, its logo, or one of the many other trademarks that a company uses in the marketplace to identify its various goods and services, protecting these valuable trademark assets is one of the most important things that any business should address.
So where does one turn to ensure that its trademarks are protected to the maximum extent allowed by law? The process of getting this protection for a trademark in the United States involves registering the trademark with the United States Patent & Trademark Office (USPTO). There are several options.
One can turn to a law firm. This is certainly the most expensive option. Trademark attorneys at law firms generally charge by the hour and, depending on the size of the firm, hourly rates can range from $250 to $600. Given the uncertainties involved in the trademark registration process, this can add up to an unpleasant surprise when all is said and done.
Unfortunately, a lot of people use the services of so-called document filers, including the giant of the industry, LegalZoom. This is never the right choice. It is a little known fact that these services do not in fact register your trademark. They merely file an application with the information that you provide to them without any legal review or follow-up. If you are thinking of using such a “garbage-in, garbage-out” service, you might as well save your money by cutting out the middleman and doing it yourself.
One can attempt to register a trademark on ones own. In fact, anyone can represent oneself in any legal proceeding, but it is the rare individual who is willing to take on the challenge of “playing lawyer”. The trademark registration process is fraught with potential snags that only an experienced trademark attorney can navigate. An experienced trademark attorney knows the law and the “tricks of the trade”, and has had significant experience with the USPTO – thus being in a position to most accurately evaluate the outcome of choices to be made and arguments to present in order to get the ultimate prize of a registered trademark for her client.
So, now that it is clear that an experienced trademark attorney is the smart choice, how do you find one? There are many trademark attorneys with websites through which you can engage the attorney to initiate a trademark application. There are several key things to look for. A description of each of these follows.Look for a “Real” Flat Fee While many trademark registration attorneys will advertise a flat fee, be very careful about this claim. The vast majority of so-called flat fee trademark registration services excludes certain work, and will instead charge an hourly rate for this excluded work. The most significant work charged by the hour is the work involved in responding to “substantive” office actions issued by the USPTO. It is very common for the USPTO to at least issue an initial refusal to register your trademark based on one of the many statutory provisions of the trademark law that place restrictions of what may and may not be registered as a trademark. Responding to these office actions can be a very time consuming process. You want to be sure that this is included in the advertised flat fee. Virtually always, it is not. Other categories of work are similarly very often excluded from the flat fee, including submitting certain types of evidence, filing certain necessary forms during “prosecution” (i.e. the registration process) and including more than one class of goods and services in the trademark application. Be Sure That Your Trademark Will be Thoroughly Searched A necessary step in the trademark registration process is the trademark search. This maximizes the chances that your trademark will not be refused due to a prior conflicting trademark or that there are any prior common-law trademark rights owners that can take legal action against you even if you are able to register your trademark. You want to be sure that you obtain a comprehensive search that includes not only a search for identical trademarks that are registered but also common law trademarks, business names, domain names, and most importantly, any trademark that may not be identical yet nonetheless will be considered “confusingly similar” to yours. For example, in a recent decision of the court that reviews decisions of the USPTO, the trademark JOTS (for gelatin based alcohol based “shots”) was deemed to be confusingly similar to the trademark TOTTS (for champagne). Only a good trademark search performed by an experienced trademark attorney would have discovered this issue before any money was wasted on the process.Make Sure That the Attorney Has Significant Experience Registering Trademarks This is perhaps obvious but you should still be sure you know whom you are working with. Youll want to see that the trademark attorneys credentials are detailed on her website. You should also look for an attorney who is willing to provide free consultations and who offers multiple means of communicating with her (email, phone, forms, etc.). For the fixed fee, a trademark attorney should be willing to spend as much time communicating with you as necessary. The trademark registration process is a very collaborative one where the attorney will often need much information from you in order to do the job in a way that maximizes your chances of obtaining your trademark registration. This often requires a lot of back and forth between the attorney and the client. A good trademark attorney is skilled at explaining sometimes confusing aspects of trademark law and practice in a clear and concise manner for you.
Armed with this knowledge, you are ready to start protecting your companys most valuable assets.