How to choose a trademark attorney: Extended Entry
When it comes to trademark law you need to be aware of the fact that this is a niche area of law that has many unique principles and requirements. And because of this the service of an attorney who specializes in trademark law is actually required for many situations, such as to file a trademark application, evaluate a trademark search or trademark product name. But the problem that many people face is how to choose a trademark attorney. And one of the main reasons that you want to ensure that you have chosen a good trademark attorney is because they are going to be there to counsel you on all of the aspects of registering a trademark and trademark filing. But they are also going to be able to work with the USPTO to answer any objections the trademark lawyer for the USPTO has about your trademark application, so they will need to be able to write briefs that address any objections that are brought up in the course of registering your trademark.
Here are some things that you are going to want to keep in mind when it comes to choosing a trademark attorney.
You never want to pick an attorney based solely upon a lawyer referral service. The reason for this is that lawyer referral services usually do not evaluate the abilities of the attorneys in their listings. They actually accept any attorney who is willing to pay the membership dues of that referral service. Then what happens is that the referral service refers you to these "trademark attorneys" on a rotating basis. And it is usually the attorney's own subjective determination that they are a trademark attorney, and the hard part is that these attorneys can have little experience and knowledge of trademark law.
You also don't want to choose an attorney based on just their advertising. The reason for this is that this is a poor way to choose an attorney because you are relying solely on their advertisements. But you also need to keep in mind that these trademark attorneys who are extensively advertising their practices usually run their law offices like a factory. What this boils down to is that they are going to most likely provide you with impersonal service and they are going to end up using an army of paralegals to actually prepare your trademark application.
When looking at a trademark attorney you are going to want to make sure that they are going to be able to provide you with the type of service that you deserve, remember that you are paying them to perform these services so you want to make sure that you are getting your money's worth. What you are going to want to do is to choose a trademark attorney who will be able to provide you with the individual attention that you need for your trademark matters. This includes every aspect of your trademark needs, including trademark searching and trademark filing.
1. Choosing a Trademark Attorney
This article provides you with all of the information that you are going to need to have in order to choose a trademark attorney. The article also tells you what traits to look for in an attorney.
2. The Role of a Trademark Lawyer
This article briefly describes what the trademark attorney is going to be doing. This information should help you when it comes time to choosing an attorney because you will know what they should be doing.
3. Trademark Attorney Profile
This website provides you with a variety of legal resource linsk that you can use to help find attorneys who specialize in trademark law, but the resources also provide you with other information from a legal point of view.
4. Find a Patent and Trademark Attorney
This website allows you to search various states to find any kind of attorney that you need. This is a search engine that just gives you numerous attorney names that are registered with this site it is up to you to look into each attorney further.
5. Trademark attorney
This article briefly describes what a trademark attorney is, but it goes into detail about what various countries require from people to become a trademark attorney.
9. When to Use a Trademark Attorney
In addition to talking about what a trademark attorney is this article also goes into detail about when you are most likely going to need to use a trademark attorney.
10. Choose an Experienced Trademark Attorney
This article tells you what a trademark attorney is and what it is that they do. But the article also offers you tips and advice on what you can do to ensure that you have hired an experienced trademark attorney.
You are also going to want to look for an attorney who is well educated in trademark law, but you also want to make sure that they have extensive experience in providing people with trademark assistance. So what you are going to want to do is to look at the graduate schools that they attended and see what kind of an intellectual property program that they have. You are actually going to want to choose an attorney who went to school that is well known for having an outstanding program on intellectual property. According to News & World Report some of the best rated law schools for intellectual property programs are:
University of California, Berkeley (Boalt Hall School of Law)
George Washington University
Franklin Pierce Law Center
New York University
University of Houston
You are also going to want to find out where the trademark attorney practiced law at before. Basically you are going to want to find out where the lawyer previously practiced trademark law, but you are also going to want to find out where they are currently practicing law at. Finding out where they are currently practicing at shouldn't be very hard because you will be contacting that law firm when you contact the potential lawyer. According to Law.com, which just recently surveyed legal recruiters, they determined that the following law firms are the most prestigious law firms in the intellectual property practice area:
Cravath, Swain & Moore from New York City
Wilson Sonsini Goodrich & Rosati from Palo Alto, CA
Pennie & Edmonds, L.L.P. from New York City
Cooley Godward, L.L.P. from Palo Alto, CA
Kirkland & Ellis from Chicago
In fact it has been determined through numerous studies and surveys that your best trademark lawyers will generally be in the larger cities. Or you can also find them in areas of the country that are high technology, such as Palo Alto, California.
You are going to need to ask your trademark lawyer whether or not they have experience registering trademarks in your industry. The reason for this is that you are going to want to hire a lawyer who has a lot of knowledge about your industry because then they will be able to describe your trademark in better terms than somebody who has no clue what you are doing or how to describe what it is you are doing. A perfect example of this would be a software company. They would want a trademark attorney who was familiar with technically complex products so that they can appropriately describe the software in the trademark application.
Now that you know what to look for when choosing a trademark attorney the process should be a lot smoother and you should be able to choose the best trademark attorney for your needs. But just because you have chosen a trademark attorney that doesn't mean that you are done evaluating that attorney. There are a few other things that you need to look for to ensure that you have made the best choice.
Here are some things that you should look for in your attorney to ensure that you are receiving the high level of trademark assistance that you deserve.
Keep you informed of all major developments. This doesn't matter if it is examining a trademark report, filing a trademark application, or defending you against a trademark infringement lawsuit, a good lawyer is going to keep you informed about everything that they are going to be doing or are currently doing on your behalf. And in addition to keeping you informed about things they are going to be doing they are also going to be keeping you updated on everything that is going on as things progress. The lawyer should also be providing you with copies of anything and everything that is being filed on your behalf or that has anything to do with your trademark, including copies of trademark searches done for you and anything else.
Quickly respond to your phone calls or emails. This is a sore point because many times trademark lawyers, especially the ones from larger firms that have numerous paralegals working for them, tend to neglect answering your questions personally because they are used to having other people do things for them. So what you are going to want to do is find a trademark attorney genuinely concerned about your trademarks and who wants to work successfully with you to ensure that your trademark applications mature to trademark registrations. In order to ensure that you find an attorney who is going to give you the personal attention you deserve you are going to want to ask whether your trademark application and correspondence to the U.S. Patent and Trademark Office is going to be handled by the attorney themselves or by one of their employees instead.
Allow you to determine what trademark you are going to select. Many times the attorneys are going to want to give you their opinion about what trademark you should go with because they are the ones who did the searches so they think they know more about picking trademark than you do. So what you need to remember is that the role of the trademark attorney is to examine the risks involved in using a certain trademark slogan or trademark logo and figure out the likelihood of your trademark application becoming a registered trademark. So whatever trademark you wish to select is your decision and should be made based upon your marketing goals. Often times you will find that you want to register a certain trademark because the trademark is the perfect choice for advertising, but what your lawyer is telling you is that the trademark you are choosing to register is risky to use or going to be hard to register for any kind of reason. But the final decision is up to you, not your attorney.