3
Dec/02

Dear Abby: Should I Retain a Trademark Lawyer?


A business owner wrote a small business advisor in the Sacramento Bee:

As a new home-based business owner, I would like to find out more about searching and registering a trademark for my new Web service. I plan to sell ethnic food over the Internet and want to ensure my brand as well as avoid infringement on others. Should I work with a law firm or perform a trademark search on my own using the the U.S. Trademark and Patent Online service? What kind of costs would I incur using either vehicle?

The advisor, Alice Jacobs replied in part:

. . . you may find it easier and safer in terms of avoiding legal troubles down the road to shell out the money to pay an attorney who does this type of work on a daily basis and knows the ins and outs of trademark and patent searches and registration.

I’ve edited out any hedging on her part, but you can read her entire response here.  A comprehensive Google search could not reveal any responsble businessperson urging that trademark counsel not be used (dry humor indicator on).

I want to emphasize and expand on several points she made. 

First, it wasn’t clear from the column that searching the U.S. Trademark Registry is insufficent for clearing a mark, simply because of common law rights – mere use of a trademark creates protectable rights. 

Second, while it’s great that deadhit searching is as freely available as it is, it is not a reliable tool for clearing a trademark for availability, because:

 (1) the underlying databases can be incomplete;

 (2) it is difficult to manually search all confusingly similar marks (N-R-G, ENERGIEE and ZENERGY may all be confusingly similar to ENERGY); and

(3) only the outside search firms presently have the databases sufficient to conduct a comprehensive common law search.  Google is not enough.

 

As to filing trademarks, a trademark application is a document filed in order to perfect legal rights.  It is conceivable that a layperson could locate free legal advice online or elsewhere, but in any event, legal advice is required to maximize those rights.  In worst case scenarios, I have seen laypeople simply lose rights through avoidable mistakes.

As to costs, the outside search firms such as NameProtect and T and T, charge several hundred dollars for a full search.  I have seen website-based search firms essentially re-sell Dogpile as a common law search.  Small obscure usages can come back to haunt you.  Amazon had a lawsuit when a tiny bookstore named Amazon came out of the woodwork.  Comprehensiveness of the common law search is worth the money.

As to evaluation of the search, I evaluate searches so of course I think they’re essential.  The person who reviews a search must perform a small likelihood of confusion test for each ‘hit’ in the search.  Trademark lawyers are trained to perform likelihood of confusion tests.  Some lawyers charge by the hour for this, some bundle the analysis with the search.  The large NY firms will charge several hundred dollars for the evaluation.  I cap my opinion letters at $300.  The trademarkguru.biz (who bought a sponsored link which shows up when you search for Trademark Blog on Google) charges $350).

As to filing, the large trademark firms (like my old Mother Firm), tend to charge approximately $600 as a standard fee, with additional charges for additional classes.  Sometimes there are multiple filing discounts.  Litman Law (who also have a sponsored link for a Trademark Blog Google search) appear to charge approximately $600.  Some of the online trademark firms appear to charge less.  I charge $395, with no additional charges for up to two additional classes.

Bear in mind that standard fees usually cover only what is referred to as “routine prosecution.”  One application may sail through the PTO while another might require hours and hours of argumentation.  I have only seen firms agree to let set fees cover extensive responses to office actions when the client gives the firm sufficient work so that it all evens out.

I would be happy to answer more questions on this topic.  Email me at [email protected].

 

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