This article covers the questions to ask before hiring a trademark attorney (or a trademark service like LegalZoom, for that matter). While it can be tempting to make your decision based on price, it is important to understand exactly what you will be getting when hiring a trademark attorney to do file your trademark application.
Ask These Questions Before Hiring A Trademark Attorney
- What kind of trademark search do you do? A trademark search is an essential part of the trademark application and registration process. And not all trademark attorneys will do a search, or if they do, it will be a cursory one. A proper trademark search should search not only the records of the United States Patent & Trademark Office (USPTO), but also state trademark databases and corporate name databases.
- How do you do trademark docketing? Not all services will offer trademark docketing. What this means is that once your application is filed, you are on your own. If something comes up at the trademark office, you might not learn about it until it is too late and your trademark application is abandoned or cancelled. Any good trademark attorney will have a docketing system that tracks events in the application process and alerts the attorney so that they can respond promptly.
- Do you charge if something comes up during the application process? According to the USPTO, most trademark applications have some sort of Office Action that needs a response. While most of these might be minor adjustments (perhaps slight changes to the description of the goods and services), if they are not addressed, they will lead to the abandonment of the trademark application. Some attorneys or services will charge for these types of followups, and some will not. It is important to know so that there are no surprises later.
- Can you advise me on using my trademark? The key distinction between a trademark attorney and a trademark service like LegalZoom is that the services can’t legally offer a legal opinion about the strength of a trademark or how to use it in your business. These legal opinions are crucial as they help you avoid choosing a trademark that might not function well or may have legal issues down the road.
Of course, there are more questions that you may have when choosing to hire a trademark attorney. As with anything else, it’s important to be an informed consumer before spending money on a cheap option that may not do all that you had hoped and ends up costing more in the long run.
If you want to ask us any of these questions or see what Counsel for Creators LLP can do to help you get your trademark registered, you can set up a time on our online calendar and we will give you a call.
