Trademark 101: How To Choose a Trademark Attorney

Let us start with the obvious question: should you hire a trademark attorney? Absolutely.

Hiring a trademark attorney is a smart move – one that pays for itself in the long run. A licensed trademark attorney offers you an invaluable range of services. For instance, an attorney can help you choose a strong mark to register. Thousands of trademarks are turned down every month for many reasons. Working with an attorney will limit the likelihood of this occurring.

But there’s more. In addition to assisting with your registration, an attorney can also enforce your trademark rights if someone else should ever infringe upon them. Trademark attorneys can also offer helpful advice on your intellectual property. Some of the other services provided by a trademark attorney include evaluating your trademark, filing your trademark application, and defending against application refusals.

A trademark attorney will help you identify whether or not there are other trademarks that might prevent yours from being registered. The attorney will review the look and description of your mark so that it will not be rejected for being too similar to someone else’s.

Finding a Trademark Attorney

Finding a trademark attorney is not difficult, and there are different avenues available to you to get one. The most convenient option is to use the Internet. Simply typing the words ‘trademark attorney’ into any search engine will reveal dozens of attorneys that you can approach. You can also find attorneys by asking your friends, family, and colleagues for referrals (though, of course, we recommend our services highly).

But simply finding a trademark attorney is not the challenge. It is picking the right one. To ensure that you make the right choice, you will need to carefully screen your shortlisted options. The following are some of the ways that you can do this:

Choosing the Right Trademark Attorney

Look for an Experienced Attorney

You cannot put a price on experience. Degrees are important, but experience is just as significant. An experienced trademark attorney will be familiar with the common pitfalls and errors linked with the trademark registration process. He or she will be able to review your trademark application and point out errors that you otherwise would have missed.

Do not neglect to check the industries familiar to the attorney. An attorney who is experienced in registering trademarks in a field similar to yours will be in a better position to describe your product or service in the trademark application.

Pick an Educated and Licensed Attorney

During your search for an attorney, you may run into non-legal professionals offering their services. Do yourself a favor and avoid those. Hiring a non-legal service may appear more affordable, but it can end up costing you a lot more in the long run.

A licensed trademark attorney is in the best position to help you. He or she will have a firm understanding of trademark laws and will be able to provide good legal advice on the risks attached to your mark. A licensed attorney will also be able to conduct extensive trademark searches, ensuring that your application is not turned down for obvious technicalities.

It is also a good idea to find out where your attorney completed his or her education. Obviously, not every lawyer graduates from Harvard Law School, and that does not mean that those who don’t are any less outstanding. However, it is still important to confirm that the person you hire has completed an accredited law degree program.

Look For an Attorney Who Will Give Your Application the Attention It Deserves

Avoid lawyers who simply collect applications and then hand them out to paralegals. This is why contacting trademark attorneys through referrals or advertising services is sometimes a bad idea. Such lawyers are likely to end up swamped with trademark requests, which they then delegate out. If you are going to use such services, take some time to vet the attorney.

Before you decide on an attorney, verify that he or she will in fact be handling your registration. Even if the attorney is going to be working alongside a paralegal, the lawyer must be able to guarantee that he or she will personally supervise each stage of the application process, including preparing and reviewing the application before it is sent out.

Choose an Attorney Who Will Keep You Updated On Developments

Registering a trademark takes time. In some cases, the process may last longer than a year. During this period, the trademark attorney should be willing to keep you informed if there are any updates on the status of your application.

Find out if your attorney is willing to keep you updated and how frequently the lawyer will do so. For instance, your attorney should be willing to provide you with copies of your trademark search report. If your application should evolve into a trademark suit, the attorney must be able to keep you updated on the progress of your defense.

Find Out What Kind of Support the Attorney Can Offer

Maybe you want to arrange for an international trademark registration, or you are considering registering a logo. Your trademark attorney should be able to offer these services and more. Generally, it is always advisable to arrange an interview or phone consultation with an attorney before you make your final decision as this gives you the best possible opportunity to assess his or her capabilities.

The Bottom Line

Some people believe that hiring a trademark attorney is costly. However, in most cases, it is ultimately more costly not to hire one. When it comes to choosing an attorney, make sure you select someone who is willing to work for you. The job of a trademark attorney is not simply to get a trademark for you, but to evaluate the different options you have and give you the recommendations that make the most sense for your business.

Ultimately, the decision of whether or not to proceed with registering a trademark does not belong to the attorney. It is yours to make. The right attorney—whether it’s Xavier Morales or another lawyer—will be there to support you.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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