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Do I Need to Hire a Trademark Lawyer?

These days shopping around for trademark registration services is a bit like going to the market to shop for bread in that it can be very overwhelming. With so many options at such varying price levels it is hard to know which direction to go in. Hopefully this article will offer some clarity.

Trademark Basics

So you have settled on a brand name, product name or tagline that you really love. Great. The first question you want to ask yourself is whether this is a strong trademark like a fanciful trademark (e.g., Clorox or Exxon) or an arbitrary mark (e.g., Apple (but for computer hardware not a produce store)? Or is it a weaker trademark for example something suggestive like “7-Eleven” or perhaps even descriptive like say “ChapStick?” If you’re not sure how to consider your trademark, try checking with our Test Your Trademark feature called the BrandMeter or look up some guides online. Once you feel very comfortable with your choice at least regards to fundamental issues like descriptiveness then the next step is to do some homework.

Before you even think about hiring anyone to help you, you should be conducting some of your own basic and general clearance searches just to make sure there is nothing entirely obvious out there you need to be concerned with. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another’s intellectual property.

As a good starting point, I recommend doing some major search engine queries like Google, Bing and DuckDuckGo. I would also go to the United States Patent and Trademark Office (USPTO) and perform a “basic” search on the trademark in their databases. This will reveal whether any other identical marks have been applied for, registered or are now abandoned with the USPTO. Remember that even if you see that there are conflicts they may not be a problem if the goods and services are very different. For example, the market is not confused as to the source of Delta Airlines versus Delta faucets even though they share the same trademark. And know as well that just because you may not see an obvious conflict it does not mean that none exist. For a full overview of proper trademark due diligence click here. Another quick search you can do is look at a few domain registry platforms, for example the GoDaddy WhoIs and ICANN databases. Evidence of domain ownership does not mean that any trademark rights have been claimed, but it can certainly suggest it.

The above is really just a starting point. Doing this basic research BEFORE you spend any money just makes common sense because clear and obvious conflicts will likely be revealed and if so you can adjust accordingly, but by no means does it ensure you are now good to go just because you did not discover a conflict while conducting your basic search. What it means is that you are presumably now ready to hire a professional to conduct a proper comprehensive clearance search that will cover a lot more ground. For a good overview of what is covered in our full comprehensive searches click here.

LegalZoom Versus a Trademark Attorney

Ok, so you’ve picked a strong trademark and you did some homework on it and you are now ready to take it to the next level. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance as discussed above. Conducting a proper search is a skill set all on its own and we also cannot discount the importance of getting an experienced analysis from a professional as well. Trademark is a complicated and non-intuitive area of intellectual property law and unless you are in the business there is no reason why you would understand it thoroughly enough to risk any exposure. To use an analogy, even though I am more than capable of reading an instruction manual, I still choose not to work on my own auto transmission because I know what is at stake and how easily things can get complicated. Here is no different.

The appeal of corporate filing services such as LegalZoom and others is obvious. They offer a one-size-fits-all out-of-the-box product. It is easily accessible and more often than not cheaper than professional options (although today that too might be debatable). But let us not forget that trademark clearance, filing and registration is a legal matter and these kind of platforms are not legal providers despite their rather misleading monikers. This means essentially that should a legal question come up, and they do – all the time – you can expect to hear the following from their customer service department: “I’m sorry, but that is a specific legal question that you will have to ask a lawyer.” Personally, I think any business entity that uses taglines such as “Legal Help is Here” or “We Put the Law On Your Side,” but then have to by law disclaim in writing that they are NOT a law firm and they cannot offer any actual legal advice is basically peeing on your head and telling you its raining. That’s just me. But what about the cost?

Good question. You should not have to be spending thousands of dollars to get this done, but what you pay ultimately should make sense to you. For example, if I told you that I can put a new roof on your house for $2000.00 I guarantee that this is far cheaper than any other bid you will receive.  But I can also guarantee that you would not hire me despite the fact that I am the cheapest. This is because in that context you understand well exactly what is involved and what is at stake and my lowball quote makes you nervous as it should. Allow me to let you in on a little known fact about this business. Most large IP law firms outsource their trademark clearance searches to professional resource companies like Coresearch, West, Lexis, etc., you may have heard of some of these. These companies will execute a comprehensive search then prepare a report for the attorney. Then the attorney will review and analyze the report and draft a clearance letter in accordance with their fee schedule. The cost for the search is always past onto you the client and that cost all by itself will usually be around $600.00. This is even before the lawyer starts charging for her time. Now, we handle a lot of trademark work so it is worth it for my firm to subscribe to the research tools directly and do the searches ourselves for a far cheaper rate, but you should remember this when non-lawyer corporations advertise such low fees for these services and ask yourself what exactly went into that and what exactly am I getting for my money?

Look, there are certainly times when a trademark filing will go without any problems or hitches and in such a case if you avoided a professional the odds are you saved money that time. But what  is less understood is that very often in the realm of trademark law a problem may not actually reveal itself until much later and usually only after you have spent a ton of money in support of your trademark. In my opinion, that is just not a risk worth taking so you can avoid a relatively low expenditure.

In conclusion, when it comes to legal issues it is best to hire legal professionals so long as you’re smart about it. I encourage you to call around to a number of trademark lawyers as most like us will offer free phone consults and get a sense for what they change and more importantly what they actually provide for the money before you make any commitment.






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