Trademarks · Lawyer

How to pick a lawyer for a trademark?

Michael Calleia Product/Experience Design/Strategy Leader. Founder, Humanist partnering with clients to build great products and brands

July 10th, 2014

I'm forming a LLC and want to trademark the name. Out of the five lawyers I spoke with I like two, but I'm having some doubts about the final selection. Here are the basics:

Both lawyers are focused on small businesses and startups.

Lawyer 1: quoted $350 for a "basic" trademark search and filing. This also happened to be the lowest quote, though that is not my reason for selection this person. This is a solo practice.

Lawyer 2: In addition to small business and startup experience, also has IP experience and I will need someone to review my service agreements in the future. They are also a small firm and quoted $1000 for an "extensive" search and filing. This fee is about in line with three other firms.

A "basic" search is a search on the trademark site, Google searches, and a couple of other sources.
An "extensive" search is said to be all of the above, plus additional corporate name searches - they claimed that included a search on Thomson, but that raised a red-flag as I've been told there is a hard cost from Thomson that is about $800.

More than the search, my concern is that I want someone who can craft a bulletproof application to get the trademark registered and protect the name.

So, is $350 just too good of a price? Is an "extensive" search overkill?
You’re ready to turn your idea into a business. But how do you protect it from competitors and copycats? In this course, an experienced patent attorney explains the different types of legal protections to help you determine which is best for your business.

Will Glasson Assistant County Attorney, Multnomah County

July 11th, 2014

I am a lawyer, and an IP lawyer at that (when I was in private practice). I second Colin's comment above and suggest that the first consideration when mulling retaining a lawyer for IP work is identifying what you're actually interested in buying. Money spent on lawyers is no different than money spent on other business assets. For every spend you should have a sense for your expected ROI. So, for investment in professional IP services, you should ask: am I investing in IP protection or in IP development? It's true that investors often welcome IP portfolios. But for startups with limited resources, I'd argue that the better test for whether investment in IP protection is worth it is whether that investment is part of an overall go-to-market scheme. If the IP investment is reasonably likely to help make your product or service more competitive, then it may be worth the hit to cash flow. If the IP investment is intended to goose company value, and isn't directly tied to product or service competitiveness, then I'd ask whether the investment is a good idea. IP investment intended to improve valuation is more speculative investment. 

All that said, realize that trademark rights are acquired by appropriation -- by using a mark and, through that use, pulling it out of the public domain. USPTO registrations just piggy-back on that use. There are advantages to USPTO registration, but there are downsides too. One important downside is the risk that through filing a TM application you will notify another company out there that you're using a mark that they consider "theirs" and invite a TM dispute. TM dispute = bigger hit to cash flow. If a TM application withstands examination, it's sent to publication. Publication is intended to put the world on notice that you're about to acquire exclusive US rights to that mark. And lots of company monitor these publications to ensure nobody gets a TM similar to theirs (check out your mark on the TTABVUE search). If you haven't done or paid for reasonably extensive diligence into other uses of the mark, you run a greater risk that your mark will invite a TM dispute. Bottom line: if you're going to file the application, make sure the party you're using offers a good search as part of their service. (Alternatively, you could buy your own search from sites like trademarkinfo.com, but then you'd need to learn how to interpret the results.) Cheaper TM services sometimes omit adequate searches and don't price in prosecution hurdles. Caveat emptor. 

Jessica Alter Entrepreneur & Advisor

July 10th, 2014

Might also be good to follow this topic http://members.founderdating.com/discuss/topic/966

Anonymous

July 10th, 2014

You can go to a site like Legal Zoom to find the rock bottom price for a trademark.  I recently sold a company and the fact that I had a solid trademark added to the value.  The main question is: do you want a trademark just for the sake of having a trademark or do you want confidence that your brand is protected? 

You're correct in assuming that a portion of the higher cost is attributed to a fixed-cost database search that is much more extensive.  In my case it was worth paying a little more up front to make sure my trademark and patent had real value.

Steve Miller Technology Consultant

July 11th, 2014

$350 is about right. I used http://www.herranenlaw.com/ and Alena is extremely knowledgable in trademarks, taxes and corporate startups.   Alena trademarked the phase "That Was Stupid"  when a L.A Law Professor told me it couldn't be done. It was accepted on the first try.   
I agree with Bob in that most of the work you can do yourself.  You just need an experienced Lawyer as you have to pay each time you get rejected / file.  

Michael Calleia Product/Experience Design/Strategy Leader. Founder, Humanist partnering with clients to build great products and brands

July 11th, 2014

Thank you everyone. I made my pick.

I took another look at both lawyers and considered years experience, focus of the practice and who extensive the search offered is.

As others have pointed out, paying a little more now for more extensive search can payoff later. I was hit with a TM dispute once, so I'd rather play it safer on this one to protect my investment in the brand.

Bob Binder Member of Technical Staff at Software Engineering Institute | Carnegie Mellon University

July 11th, 2014

I’m not a lawyer, but I’ve filed and been granted several trademarks on my own. However, the last time I looked at this (about a year ago), the filing requirements had a new layer of obfuscation and complexity. As any mistake in this can kill your application or leave you with meaningless protection (maybe permanently), I decided that I needed a specialist. You can do most of the basic searching on the USPTO site yourself and of course with Google and Bing. If your mark is similar but not identical to an existing mark, you may need an expert to assess how to proceed. So, if your mark is clearly unique, I’d pay the $350 to make sure the documents are filed correctly and let it go at that.