My last post started this two-part series on how to choose a trademark attorney. Previously, we discussed finding potential attorneys through referrals and word of mouth. Once you have a few options, there are some key questions you can ask to help determine the firm that will be the best fit for you and your business.
The first thing to keep in mind is that you should be looking to start a relationship with your trademark attorney, rather than simply paying for a trademark. When you start a business, the goal and hope is that your brand is groomed for longevity, so why not form a relationship that grows with you?
If you have someone involved from the very start, the attorney will be familiar with your entire business and your style, personality, and preferences. She can help advise you on matters beyond just the trademarks and ensure you are protected from all of the angles. So for starters, your first criteria should be the click. Do you get along with the attorney from the first conversation? Does she ask how you are doing and make conversation or is it right down to business? Is this someone you feel that you can trust with your brand? It is important to trust your gut at the outset when feeling an attorney out.
Next, assuming you want to meet the attorney to discuss further, it comes time to book a consultation. As I mentioned in my last post, it is not unusual for attorneys nowadays to charge for their consultations. However, be sure to ask if the consultation fee can be applied toward the trademark search, application, etc. if you decide to retain her.
Does the Location of Your Trademark Attorney Matter?
Sometimes, you may meet someone by chance at a conference out of town or through a friend who lives in another state. I have often struck up conversations on planes and in other cities when I travel, many times providing my business card. Unlike many areas of law such as divorces, bankruptcies, and criminal issues, trademark searches and registrations are not state-specific.
Because they are done at the federal level to seek nationwide protection, a trademark attorney need not be located where you are. The advantage here is that if you like and trust someone that came highly recommended to you, you can still work with her despite the distance. Most trademark attorneys are used to clients in other cities and countries, so we are equipped to work with phone calls, email, and electronic documents.
Check for Experience
The next few questions you want to ask are about the attorney’s practice in trademark law. Not only do you want to ensure that trademarks are something she is experienced in, but ask whether this is just one area of many that this attorney practices or if it is a specialty. Just like with medicine you want a doctor that specializes in podiatry for a problem with your foot or a cardiologist for a heart issue, you want to seek out an attorney that has a focus in the area of law you are dealing in.
Another related inquiry is whether the attorney, assuming she is experienced in trademark, is a prosecutor or litigator. Here, a prosecutor is not the kind that you normally think of. Trademark prosecution attorneys are the ones whose work primarily involves searches and registrations. Litigation attorneys, on the other hand, deal more with the conflicts that arise when someone infringes on another party’s trademark, for example, and there is a lawsuit. Many prosecutors do not like to litigate and many trial lawyers do not try to dabble in registrations. Personally, I am the former and focus only on registrations.
I hope this helps you navigate your attorney search with a bit more information. My next post will discuss the various legal services that are available for trademarks and why most people tend to prefer hiring a trademark attorney.
Sonia Lakhany is an intellectual property attorney at Lakhany Law, PC. She specializes in trademark and copyright law, teaches and is a frequent speaker and blogger. Sonia is also active on several boards and committees in the Atlanta legal community.
