Who to Hire? Trademark Attorney or Online Trademark Registration Service
As a new solopreneur, it’s a given that your budget is tight and you are cost-sensitive. Of course, as you decide which services you need at each stage of launching your business, legal fees are bound to cause a slight bit of panic. After all, an attorney’s time does come at a premium, given the unique skillset that she has. The fear of paying thousands of dollars for startup legal issues often leads solopreneurs to websites offering legal services instead.
Now, before we get ahead of ourselves, let’s be clear about the purpose of this post. We are not looking to name names or badmouth these websites. Certainly, as an attorney who manages a law practice, I would recommend using a law firm where possible and financially feasible, particular when it comes to trademark clearance and registration. However, I often meet clients who have questions about the comparison between a trademark registration service and a trademark law firm, so I thought I would accumulate the points that a solopreneur should consider most when considering one of these services.
Since cost is usually the reason behind choosing one of these services, be sure that you are crystal clear as to that for which you are paying and what is provided for that fee. The first two points to consider are related to what is included.
1. Are searches included?
Is a basic or comprehensive search included? For a refresher on why this is important, see my four-part series on trademark searches here). If not, how much extra is a search report? You will often find that the service will probably just fill out the form with the mark you requested, without conducting any due diligence as to whether the mark is clear for use or riddled with conflict. This can lead to a waste of money in government filing fees if an initial search had shown that conflicting marks already exist. Why bother applying for a mark that is going to get rejected?
2. How are Office Actions handled?
Office Actions are correspondence from the Examining Attorney at the U.S. Patent and Trademark Office (USPTO) who is reviewing your application for a trademark. Sometimes Office Actions merely request more information or clarification, but they also sometimes flat-out refuse registration of a mark. In the latter scenario, a response must researched and drafted carefully to see if the Examining Attorney will reverse the refusal. These can often take hours and, in my experience, are rarely included in the initial fee paid to a registration service. Usually, that fee is to just fill out the application on your behalf. More on Office Actions in my next post.
3. Who is the Attorney of Record?
Lastly, double check whether the service for which you are paying will also be listed as the Attorney of Record. This means that an attorney is associated with the application and that the USPTO will communicate directly with the Attorney. A major advantage of this is that you will not risk any correspondence being missed or delayed, as a large part of a trademark attorney’s job is to ensure that her docket of applications is proceeding through the system in a timely manner.
Further, Examining Attorneys often email and call the Attorney of Record directly to resolve minor Office Actions, since trademark attorneys are knowledgeable about how to handle those conversations. Often with these services, you would be listed as the Owner of the mark on the application and there is no Attorney of Record. On the other hand, when a trademark attorney completes the application on your behalf, she will sign the application as the Attorney of Record and is automatically associated with the application.
Regardless of the route you choose, a solopreneur’s job in every decision is whether to pay less on the front end and risk major expense and headache later, or to do it right the first time, even if it may cost a bit more.
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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.
