How to Choose a Trademark Attorney

Protecting your brand is one of the top priorities when starting a business or launching a new product or service. You have likely heard that hiring a trademark attorney can, according to one study, increase your chances of successfully registering your trademark with the United States Patent and Trademark Office. However, when you go to look for an attorney, there are a lot of different choices with a wide range of prices. It can be extremely difficult to compare services to find the one that balances your budget with the long-term goals that you have for registering and protecting your trademark.

As trademark attorneys, we’ve seen the good, the bad, and, the ugly when it comes to services our clients have received from prior attorneys and other non-attorney trademark filing services.  With this in mind, we have put together a list of a few questions you should ask EVERY trademark attorney before hiring them to protect your valuable trademark rights.

Question 1: How many trademark registrations have you obtained for clients?

With the influx of new trademark registration services available, a lot of general practice attorneys, patent attorneys, and others are now offering to help you register your trademark. While many of these individuals are talented attorneys, they are not necessarily trademark attorneys. Even some trademark attorneys don’t have the practical knowledge of the USPTO’s procedures to effectively assist clients in registering trademarks (they may work more on litigation or transactional matters). Experience in being directly responsible for prosecuting trademark filings to registration can be the difference between a registration and a refusal.

At Gerben IP we have registered over 6,500 trademarks. In fact, the firm’s founder, Josh Gerben, was named one of the top 10 trademark filers of 2016 according to USPTO data. Gerben IP focuses primarily on trademark law and is not a general practice firm.

Question 2: How involved will an attorney at your firm be in registering my trademark?

When services say “hire a trademark attorney” you may be surprised by how much time an actual attorney spends on your matter. Some registration services allow non-attorneys to draft language and make decisions that could drastically affect the outcome of your trademark registration. Make sure that you are paying for an attorney to review every step of the registration process and not just signing the completed application.

Gerben IP believes that an attorney should be involved in every stage of the registration process. An experienced attorney will draft the recital of your goods and services, consult with you about the results of your comprehensive search (see below), review your trademark’s ownership information, and, assist in drafting and filing the actual application itself.

Question 3: How will I know if my trademark is available for registration?

A comprehensive search is the only way to determine how “risky” registering and using your trademark is. Many trademark registration services claim to offer a “search”, or, even an on-line search tool.  Unfortunately, most of these searches are extremely limited and incomplete.  For instance, many of these low budget searches are limited to only the USPTO database and, even then, only for direct matches on that database.   This is simply not a proper trademark search. When determining whether a trademark may be registered, the USPTO looks at marks that are similar in commercial impression, which can include similarities in sight, sound, and meaning. A comprehensive search should also look at FEDERAL, STATE and COMMON LAW uses of the trademark.

Looking at GIF above. This is the exact search of “Beach Huggy” on the USPTO’s database. You’ll notice that only one result comes back – “Beach Huggy” for pillows. If you were the owner of that application, you might think you would not have an issue registering “beach huggy” because no other applications or registrations come up on your search. However, the USPTO denied this application because of a pre-existing registration for “Huggy Pets” for pillowcases. “Beach Huggy” was denied because of “Huggy Pets” for pillows. Surprised? A comprehensive search (looking at similar marks in sight, sound and meaning) likely would have uncovered this mark as a potential bar to registration.

Determining whether existing trademarks may cause an issue is a complicated legal analysis that looks at the inherent strength of a mark, the use of similar terms within an industry, and many other considerations. It takes a talented staff of legal professionals to conduct a search and an experienced trademark attorney to provide a legal opinion about your trademark. Anything less is likely to open you up to additional pitfalls, delays and potential liability that may have been avoidable.

At Gerben IP we offer a federal, state and common law comprehensive search and provide attorney analysis of each search that is completed.  Moreover, our federal and state searches are conducted using a professional grade software made by Corsearch — a company that is considered an industry leader in trademark search software.

Final Thoughts

In today’s marketplace, there is wide range of trademark service providers.  The key is finding a service provider that offers a high-quality service at a competitive price.

While Gerben IP is certainly not the least expensive trademark service available, our firm strongly believes that we provide an extraordinary value for the quality of service delivered. There are also plenty of other talented trademark attorneys that also deliver quality service.  Our caution is just to be aware of the $99 special.  After all, if you were in jail and needed to get out, would you hire the attorney (or even non-attorney service) with the $99 special, or, the attorney that appears to be charging a fair rate, has a good reputation, and, a track record of success?

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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