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How to Find a Trademark Attorney

#How do you find a good trademark lawyer?
For a client whose trademark app has been refused and needs to respond to the USPTO (yes, made the error of trying to apply themselves, save the $50, fell prey to the 'deceptive ease' of the online process).

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Step 1 - Make a list of prospective trademark attorneys.

Use any or all of the following sources (or other sources) to get a short list of trademark attorneys.

  • Ask for referrals from your current attorney, accountant, banker or other business owners.
  • Check your linkedin network (search for "trademark attorney"). Any trademark attorney with a "2nd" level has at least one mutual acquaintance with you. This is a good source of personal information about a potential lawyer.
  • Search your website for your state's attorney bar organization. State bar websites generally only list attorneys in good standing. Also, most state bar websites will show which attorneys accept clients (as opposed to working at a large corporation or for the government).

Ideally, you will want a list of 4-10 attorneys that accept clients to perform trademark legal services.

Step 2 - Research each attorney's experience directly at the US Trademark Office website.

You can search the prior trademarks that each trademark attorney has filed. The system to do the search is called TESS:

To begin searching, choose the link entitled "Free Form Search(Advanced Search)". You want to enter a search on the attorneys last searching on the attorney's name. This will give you a list of the trademarks filed by the attorney. Here is an example search on last name:


If you need the first name and last name, try this search :

Andrew[AT] and Lahser[AT]

The [AT] symbol tells the system to only search for attorney names. A list of trademarks will be shown. Glance through the listed trademarks to make sure that you have found the correct lawyer. For example, check the trademark attorney's address. You may also wish to read some of the "Descriptions of Goods and Services".

You want to be sure that the lawyer registers enough trademarks that they have a proper system for tracking their trademarks. Many trademark deadlines are spread out over 5, 6 or 10 years. Most trademark lawyers have special dockets to track these unusually long, but important deadlines.

The second system to search is TTABVUE. This system shows all of the prior specialized trademark cases (Trademark Trail and Appeal Board - TTAB) where the attorney has been involved. That system is located here:

In the "Correspondent" box, enter the name of the attorney you are searching. A list of cases (oppositions, cancellations and other specialized trademark proceeding will be shown.) Again, click on a few of the listed cases to make sure that your name search is finding the attorney that you want to research. You can also click through to any of their briefs to get a sample of their writing.

Experience at the TTAB means that the trademark attorney is likely very familiar with the key issues in trademark law. Some lawyers do many registrations, but little or no TTAB work. This is also due to the relatively specialized nature of these proceedings. Statically, less than 1 in 1000 trademarks will ever be subject to a TTAB proceeding.

Some large firms may not have the names of associate attorneys listed, but instead, always senior partners. So, just because you do not find an attorney does not mean that the attorney does not have trademark experience. Ideally, your attorney will have some experience and be viewable in each of these systems. You can read his prior work, if you wish.

Step 3 - Interview

Finally, interview the top two or three attorneys. Assuming you are interviewing an attorney to help with a US trademark registration, you could as these questions:

  1. Are there any other trademarks that would prevent me from registering my mark?
  2. Is my trademark suggestive enough to avoid a descriptiveness rejection?
  3. After describing your products, goods, or services to the lawyer, ask what class they would recommend for your trademark and if there are other classes that others in your industry might want to be listed.
  4. If you need to file trademarks internationally, ask if the attorney can provide or arrange these services.
  5. Ask if they have malpractice insurance.

Consider each lawyer's experience and familiarity with your industry. Remember, trademarks will last as long as your business does. So, your relationship with your trademark lawyer may last as long as your business.

Benefits of a Trademark Attorney in your home state

If your business has offices in only one state, there may be a slight advantage to finding a trademark attorney in your home state. Trademark laws come from three levels:

  1. The federal government: by registration at the US Trademark Office
  2. The state government: by registration at the Secretary of State
  3. From the common law: by using the trademark to sell your goods.

So, a trademark attorney in your home state may know the nuances of the local law. For example, in Arizona, the trademark law allows for statutory damages (a powerful right to obtain money damages) for infringement of a registered state trademark. This is well worth the $15 filing fee for marks used in Arizona. There is no Federal equivalent to this rule, and, most other states do not have similar provisions.

If your business has offices and customers in many states, the advantages of a trademark lawyer in your home state may be less clear. Filing for trademarks in many states can be time consuming to manage, but, may provide powerful rights.

As always, when you find information on the Internet, it is important to check this information with primary sources, such as your own attorney.

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