If my blog has an overall “theme,” it would be that working with a trademark attorney is an investment that every business needs to make. I have many posts explaining why you shouldn’t hire LegalZoom or Trademarkia for this important work. I’ve also covered why you shouldn’t try to do it yourself. But picking just any attorney to handle your trademark work can be risky, too. You need to find a good trademark attorney that can provide quality service at a reasonable rate. In this post, I will discuss the risks of picking the wrong attorney, and how you can make sure to avoid doing just that.
The Risks
This post is partially inspired by clients that have recently hired me after issues with a previous trademark attorney. A couple of these clients decided to hire me months after our initial conversation. While I was glad to be able to assist them, the reason they waited to hire me was that they both ended up going with other attorneys initially. But after they each hired another attorney, they waited months for trademark search results that they never received! This impacted both businesses significantly, as they wanted to make sure that their names were not infringing upon someone else’s federally registered trademark before moving forward. Had they hired me right away, I would have had their search results back in my standard 5 to 7 business days. Instead, they waited months, didn’t get their results back, had to obtain refunds, then hire another attorney!
Two clients also recently retained me due to billing issues with their previous attorneys. A good trademark attorney will be up front about their costs. That is why I believe in flat fees, and use them for most of my services. These clients both paid for the services of their attorneys. But then they received that dreaded “surprise invoice.” New businesses do not have the extra money lying around for unexpected attorney’s fees. That is why you want to make sure to find a good trademark attorney that isn’t going to overcharge.
Locating a Good Trademark Attorney
This post is mostly geared toward finding a trademark attorney online. However, this information is still useful for vetting attorneys to which you have been referred. The first thing you should look for is whether they have a website and online presence. It’s going to be pretty difficult to learn more about the attorney and their trademark law practice if you can’t find them online. You might also check to see if they have social media accounts, and whether those are active.
The most overlooked indicator of a good trademark attorney is whether they actively advertise that they provide trademark services. Frequently, I see recommendations for attorneys that don’t even have the word “trademark” on their website. These attorneys have usually only filed a number of trademark applications that you can count on one hand. I think there is often a perception that attorneys practice “law” instead of specializing in certain areas. Make no mistake, trademark law is a niche, and an attorney that thinks they can just “wing it” for you is making a poor decision. I’m certainly not about to go out and finalize a merger between multinational corporations or defend a DWI case.
Obviously, you will want to take into account any reviews the attorney has received online. But actually read the reviews, don’t just look at the star rating. See if the reviewers hired the attorney for the same types of legal services that you need. Again, this goes back to the question of “does this attorney actively practice trademark law?” And in addition to all of this research, there is another way to definitively answer this question.
USPTO Filing History
Because the Trademark Office’s database is public and searchable, you can look up your trademark attorney there. This is done using the TESS search system found here. First, click on “Search TESS.” Next, click on the link next to the third red arrow: “Word and/or Design Mark Search (Free Form).” From here, you can search for your attorney’s records (applications/registrations). Use this formula: firstname[at] and lastname[at]. Here’s what this looks like if you are searching my name:
If your attorney has a common name, the search might return results for multiple attorneys. Also, if you use a name variation different from what the attorney used, you might not see them. However, if successful you will end up with something like this:
As you can see, I am listed as the attorney of record on 47 applications/registrations at the time of writing this post. I have also helped to prepare and file over 600 applications for my associate, Morris. But again, I am surprised at how many attorneys I see recommended online that have only filed 1-2 applications, and generally for their own firms. This search is a check against hiring these so-called experts.
Looking for An Experienced and Straightforward Trademark Attorney?
If you want to avoid the problems that come with hiring a non-specialized or non-responsive attorney, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
