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3 Questions You Should Ask a U.S. Trademark Attorney Before Hiring Them




People in search of trademark help are sometimes intimidated by their initial interactions with the trademark attorneys they might hire. For solopreneurs or startup owners, this may be one of their first conversations with an attorney, and they may not know where to begin or what questions to ask. Here are the three questions I strongly recommend you ask any trademark attorney that you are thinking of hiring to help register your trademark.


1. How do they search for your mark?


Trademark attorneys and paralegals have two main options to search for your mark. They can search the USPTO’s trademark database, themselves, or they can use search software powered by proprietary algorithms to generate a search report for them. So which one is better? Personally, I always do my own search for the mark in the USPTO database. When I use search software for federally registered marks, it’s as a safety net to double check that I didn’t miss anything. Like wearing a belt and suspenders. Here’s why. In my experience with search software, the report usually offers up hundreds of marks that are not a real threat and often has poor judgment about what the real threats are. In theory, the report should list first the mark that is closest to yours and poses the biggest threat. In a recent backup search, the mark that was the #1 threat to my client only appeared as result #818 in the report and was coded as the lowest level of threat. Technically, the report did turn up this problematic mark, but for someone who relied too heavily on the report’s judgment or who lost concentration somewhere before mark 800, that wouldn’t really help.


So why do people use these reports? It takes a lot less time to review one of these reports than it does to perform a proper search of the USPTO’s trademark database. You also need thorough training to pull up all the results from the USPTO’s database that you need to see and to understand what you’re looking at. When the USPTO hires new attorneys to review trademark applications, those attorneys spend many hours over several weeks in a classroom learning, among other things, both search techniques and results analysis. For many months, when those attorneys are reviewing trademark applications, a more experienced attorney reviews every search they perform and provides feedback about how to do it better (and often makes them re-do the search because their first efforts would’ve missed something important). Even attorneys who have been working at the USPTO for decades still have their searches reviewed periodically and receive feedback about them. To be honest, when I went through this training at the USPTO, it could be very frustrating. But it definitely makes the attorneys who go through it much better at finding all the marks they need to and understanding which ones should block someone else’s path to registration.


Why is that so hard to learn? Because the USPTO isn’t just looking for marks that are identical to yours. They are also concerned with marks that are close in appearance but spelled slightly differently, marks that have bigger differences in appearance but that sound the same, and even marks with big differences in sound and appearance but that put a similar idea in your head (for example, the USPTO found TUNA O’ THE FARM confusingly similar to CHICKEN OF THE SEA). It’s also difficult because the search needs to be done in a kind of code. For example, if your mark was the word anthropology, just typing anthropology into the search box would definitely not pull up all of the marks you need to see. A good starting point would be something more like:


*n{“t”:2}{“h”:2}{“r”:2}{v0:2}{“p”:2}{v0:2}{“l”:2}{v0:2}{“gj”}*[bi,ti] and live[ld]


That is just where the search should begin, not where it should end. If your mark is a logo, then the searcher needs to be familiar with the design codes. Each design element has a six-digit code associated with it, and searches are performed by inputting these codes. Some complex logo designs may have dozens of differently coded design elements. Even searching for something as simple as a person is not simple at all. There are different codes depending on whether that person is a man in silhouette, woman in silhouette, child in silhouette, athlete, pirate, religious figure, clown, cowboy, etc. There are more than 100 options. For example, a logo that features the silhouette of a running man in a toga might need to be coded as (020905 running person), (020109 athlete), (020102 silhouette of a man), and (020112 men in ancient dress). Anyone without proper training might find it difficult to identify all of the codes that need to be applied and to understand how to search them in combination and which codes need to be searched alone.


For more on what makes searches challenging, click here. The bottom line is, ideally, whoever is searching for your mark should understand very well how to perform their own search within the USPTO database, how to interpret the results, and how to sort through the noise of algorithm-generated search reports when necessary.


2. Who will do the work?


Some clients spend many hours researching trademark attorneys before deciding which one they want to hire. They may have compared and contrasted impressive bios and even had a few conversations with different attorneys to feel out which was the best fit. But quite often, they don’t think of asking this question: Will the attorney with the impressive bio and who’s easy to talk with actually be the person who performs the work? Will they be the contact person for the client if issues arise? Just because that attorney signs the engagement letter and walks you through your initial consultation, don’t assume that they will be handling every task related to your project. It is common practice in many U.S. law firms for more experienced attorneys to focus on client acquisition and for less experienced attorneys or paralegals to perform most of the client’s work. The experienced attorney may review the end product, suggest some revisions, and provide their signature at the bottom. Maybe that arrangement doesn’t bother you, but wouldn't you at least like to know in advance what you’re paying for?


3. What percent of their work is trademark law?


If you needed surgery on your heart, you’d probably research online or directly ask any surgeon you were considering for the job how often they did that kind of surgery. If your research revealed that this surgeon only did a handful of those procedures each year and actually specialized in a different type of medicine, you’d keep looking. I’d recommend taking the same approach to legal services. Law is increasingly specialized. A field like trademark law has many non-intuitive rules with exceptions and exceptions to the exceptions. Your attorney is more likely to be aware of them and to stay on top of changes to the rules if they are working in trademark law day-in, day-out.


Back when I reviewed trademark applications at the USPTO, it was apparent very quickly whether the attorneys who filed the applications were knowledgeable in trademark law. The ones that were could quickly find solutions to get around their clients’ problems and shepherd the application through to registration. The ones that weren’t could make repeated and costly mistakes that delayed registration by months (or years! yes that happened). Some gave up on applications that could have reached registration if only they had understood the path forward. In fact, seeing these types of applications again and again was part of what inspired me to leave the USPTO and start my own firm dedicated to trademark law. I knew there were many people who needed good help and who weren’t getting it. If you hire a trademark attorney to guide you through this process, make sure they know the terrain. While it may not be practical or advisable to quiz them on their trademark knowledge, it can be very helpful to know whether trademarks are the heart of their practice or an add-on service they occasionally perform.


This information was posted on December 20, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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