How Large Law Firms Overcharge Trademark Clients

If you are an in-house counsel and you’re hiring outside counsel for trademark services, there’s an extremely high chance you’re overpaying for those services.

There are two main ways that large law firms typically overcharge for trademark services. The first is during the trademark search process, and the second is when filing the application.

1. Large law firms overcharge during the trademark search process

The first way large law firms typically overcharge outside counsel is during the actual trademark search process. This is because firms will pay an outside provider to conduct a search, typically costing between $650 and $100. Then, once they get that search back, an attorney will take several hours to identify any problems with the trademark and write an opinion for you. Overall, the search alone could cost $2,000 or more to just get a clearance report on a U.S. trademark.

At our firm, we do all the searching in-house using a professional-grade software with experienced trademark searchers. With our in-house staff, we can deliver a full U.S. trademark search report for a flat rate that is a fraction of what larger firms charge.

2. Large law firms overcharge during the application process

The second way that large firms tend to overbill for trademark services is by filing trademark applications that are not technically sufficient to meet USPTO requirements. Once an insufficient application is filed, you will typically receive a series of office actions that are billable time for an attorney to respond to. This includes fixing identification of goods and services, reclassifying the identification, adding specimens, and a number of other things that could have been handled in the initial phase.

At our firm, we offer a flat rate to file an application and handle all those responses. If we don’t get everything in the initial application that we should, or we decided to leave out from a strategic standpoint, we’ll follow up later and get all that taken care of for you without any additional costs. Just by doing those two simple things, we typically save clients thousands of dollars on a trademark search and filing, and provide a quality of service that is on par, if not better, with some of the major international law firms that offer trademark services.

If you would like to have a conversation about how we might be able to help you reduce your outside counsel fees when it comes to trademark clearance and prosecution, please feel free to get in touch and give us a call.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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