Hiring a trademark attorney is a better option than filing your own application. You are more likely to be successful with your application by working with a professional. However, there is a wide gap in knowledge, experience, and skill when it comes to the attorneys you might hire. Trademark law is a great field to work in, and it can provide attorneys with the ability to work remotely and to work with clients throughout the country. As a result, it is not surprising that many attorneys have recently entered this field. The problem is that the practice of trademark law can appear deceptively easy, whether you have a law degree or not. In this post, I want to discuss the kinds of questions you should ask to make sure you hire an attorney that knows this field.
Let’s start with some very general questions and issues that you may want to raise when hiring a potential trademark attorney. First, you want to try and find out if trademark law (or intellectual property more generally) is the attorney’s primary or sole area of practice. You might ask “is trademark law your only practice area?” and “what percentage of your practice is devoted to trademark law”? If the attorney also works on copyright or patent law matters, that would make sense because these are related fields. However, someone that spends most of their time on traffic or criminal law matters may not be the attorney you want to choose.
Next, you likely want to learn more about the attorney’s interest in trademark law. Is it something they studied in law school? How long have they been practicing in the field of trademark law? These are relatively obvious questions, but ones that are still worth asking.
Perhaps the most important questions to ask are where the attorney learned the practice of trademark law. There are a lot of new attorneys in the trademark field that are “self taught.” While that may work for playing a guitar (or not, in my case), an attorney that has never worked at a firm or learned the practice area from someone else is not going to be able to offer a quality service. Ask the attorney if they learned trademark law working for a firm, with a mentor, or from another source. If their answer sounds like no one taught them, that may be an indication that they are learning as they go. Also, while the attorney may have taken trademark law in school, it is still important that they have the practical experience learned from working with another experienced attorney.
Facts and Figures
In addition to learning about the attorney’s background in trademark law, there are also some more objective questions that you can ask. For starters, you might ask how many trademark applications they have filed before. An experienced attorney focused primarily on trademark law for a number of years is likely to have assisted with and/or personally filed thousands of applications. In my opinion, someone that has filed less than a few hundred applications likely (1) has not worked with another attorney (such as a mentor) that provided them with experience and helped them learn the practice, and/or (2) has not practiced in this field for much time at all.
While preparation and filing of trademark applications is a major part of the practice of trademark law, there are other aspects that you may want to ask your prospective attorney, as well. You should ask if they have represented clients in connection with trademark oppositions and cancellations at the Trademark Trial & Appeal Board. While these proceedings are less common than filing an application, an experienced attorney will have represented both defendants and plaintiffs at the TTAB. Also, you will want to ask whether the attorney has experience in sending and responding to cease and desist letters, as well as negotiating settlements stemming from trademark disputes.
Would You Like to Work with a Professional and Experienced Trademark Attorney?
While the number of trademark applications filed each year continues to increase, finding a quality attorney seems to be getting harder and harder. With an influx of new attorneys to this practice area, it is hard to know whether you’re getting quality service or paying to be someone’s learning experience. I am confident that when you speak with me, you will know that I know my stuff. To get that conversation started, please feel free to call me at (480) 360-3499, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.