How to choose a trademark attorney

Choosing a trademark attorney is not a task you should take lightly. The attorney you choose is going to impact how secure your trademark is, how smooth the registration process goes, and how well your intellectual property is protected.

Trademark law is a niche area of law with many unique principles and requirements, so not just any attorney can help you to file a trademark. You want someone who is an attorney who specializes in trademark law. In many cases, you can't even move forward with the process without an attorney who specializes in trademarks, it is required for many situations, such as to file a trademark application, evaluate a trademark search or trademark a product name.

So, now you understand why it is so important to hire an intellectual property attorney, specifically a trademark attorney, but now let's look at how to go about choosing the right trademark attorney for the job.

Step one: Know what not to do.

Choosing your attorney is important, so you should know to never pick your trademark attorney based solely upon a lawyer referral service or advertisement. This tells you very little about the attorney, and it is important to recognize that the attorneys pay for those referrals and ads, so they may not be very good. While most people realize ads are paid for by the attorney, few recognize that lawyer referral services are basically paid for as well. Most of these services do not really look at the attorney's abilities or qualifications, they simple refer them if the attorney pays the membership dues. Some of the "trademark attorneys" suggested may not have actual experience with trademark law.

One of the reasons you may not want to choose an attorney that buys and pays for recommendations is because it generally means they are not getting them other ways. This means that they probably run their practice in an impersonal way. The attorney may not even be the one who works on your case, instead it is likely a paralegal. This leads to the next step of choosing a trademark attorney.

Step two: Find an attorney who will provide individual attention to your trademark matters, including every aspect of trademark searching and trademark filing.

If you go through the process of finding, interviewing, and explaining what you need to attorneys, you want to make sure the one you talk to is actually going to be the person handling your trademark matters. You pay a high premium for an attorney, so make sure they are doing the work, not having a paralegal run your searches, or write up your applications. That is the reason you hired them, and no matter how qualified their paralegal is, you want them to do it. So, find someone who uses paralegals for help, but that also devotes their attention to your case individually as well.

Step three: Look for someone with the right education and experience.

Anyone who is an attorney will have gone to school, and will have education in law in general, but you want to find a trademark attorney who is well-educated in trademark law and has extensive experience providing trademark assistance. You want someone who keeps themselves well educated by attending seminars, and stays up with the latest news and changes in trademark law. You want an attorney who has successfully written applications for trademark and who has successfully searched for trademarks, not just someone who can do it in theory.

Some law schools are better than others, and there are some that are renowned for their programs on intellectual property law, which includes trademark, copyright and patent law. The following law schools have some of the best intellectual property programs, so it would be wise to look for someone who graduated from one of these schools:

University of California, Berkeley (Boalt Hall School of Law) George Washington University Franklin Pierce Law Center New York University University of Houston

Step four: Determine how qualified the attorney you are considering's firm is.

The firm they work with is as important as their own credentials, as the experience and expertise of others at the firm will aid your trademark process. Many times, multiple people at the firm will work on your case, even if one attorney is assigned to it. Additionally, choosing a law firm that is known for their trademark attorneys will give you the peace of mind that you are in good hands. The following law firms are some of the most prestigious law firms in the intellectual property practice area:

Cravath, Swain & Moore (New York City) Wilson Sonsini Goodrich & Rosati (Palo Alto, CA) Pennie & Edmonds, L.L.P. (New York City) Cooley Godward, L.L.P. (Palo Alto, CA) Kirkland & Ellis (Chicago)

If you do not live in one of these areas, it might still be a good idea to hire someone from a big city. Generally, the best trademark lawyers will be in large cities or in areas where technology is big.

Step five: Ask if they have experience in the area of trademark you need.

There are different reasons for hiring a trademark lawyer, so you will want to ask, for example, whether your trademark lawyer has experience registering trademarks in your industry. Every industry is different. So, if you are in a food industry, you would want to work with someone familiar with the complexities of that industry so they can accurately explain your trademark in a trademark application. If you are a software company, then an attorney familiar with technical jargon, and one that knows technical writing would be the best person to write up your technical trademark application because the attorney would need to know how to appropriately describe the software in a trademark application.

Step six: Look at recommendations and referrals.

A good trademark attorney will be able to give you references. It is important to check these because a trademark attorney can claim many things, but until you work with them you do not know whether or not they will give you the high level of trademark assistance you deserve.

When you are checking references it is important to note whether or not the trademark attorney did the following:

1. Kept the client informed of all major developments.

Getting a trademark is a process. You should be kept updated as to where they are in the process, so whether it is examining a trademark search report, filing a trademark application, or defending you against a trademark infringement lawsuit, your trademark attorney should provide you updated information on the status of your trademark matters. They should at the least give you weekly updates, and provide you with a hard copy of any searches or correspondence they have, as well as copies of your trademark application or trademark registration.

2. Do they quickly respond to emails and phone calls?

The last thing you want is to shell out big bucks for an attorney that you can't even get a hold of. Many trademark lawyers, particularly those with a lot of paralegals preparing trademark applications, will be slow to personally answer their client's questions. You want someone who cares enough about your trademark to take your calls personally and to work with you, not just for you, to ensure you are successful in obtaining and protecting your trademark. So, before hiring them, call them at different times and see how quick they are to respond, and ask previous clients how this went for them.

3. Ask the client if the attorney prepared the trademark application and correspondences with the United States Patent and Trademark Office themselves, or if one of their employees did.

Attorneys are very busy people, and so you should expect that they will have paralegals help you, return some of your calls, and take part in the process, but the attorney should not be exempt from this process, instead they should take an active part.

3. Did the attorney let you determine what trademark you will select?

The role of a trademark attorney is to examine the risks involved in using a particular trademark slogan or trademark logo and determine the likelihood of your trademark application becoming a registered trademark. They will likely make suggestions for changes if they do not think your selected trademark will help you accomplish your goals, and they will help you reach a decision about what your trademark should be, but they should never make that decision for you. Even if you are thinking about using a trademark that will be risky to use, or hard to register, your attorney should simply provide you with a risk analysis and let you decide how to proceed. That is your right, so do not hire an attorney who thinks that because they are an attorney they can make that decision for you.

Step seven: Interview them, and look for personal chemistry.

It is essential that you get along with the attorney you work with. If you hire an attorney who does things that bother you, or who has bad breath, your experience will be poor. So, while it is important to choose someone with experience and credentials, it is equally important to choose someone who will work with you and take your case on as if it were there own. You want to get along with them really well.