Quick Summary

Finding The Right Startup Trademark Attorney

Finding The Right Startup Trademark Attorney

Here are 5 steps to finding the rights startup trademark attorney for you:

1. Determine your brand objectives

2. Determine whether your trademark can be registered

3. Find an attorney with broad expertise handling trademark matters

4. Find an attorney who is transparent about their pricing

5. Find an attorney who is easy to get a hold of

Finding The Right Startup Trademark Attorney

7 min read time

Whether your startup is in the garage or basement phase, and you’re bootstrapping your way to success, or your startup has received millions of dollars in venture capital funding and you’re rapidly gaining market share, protecting your brand is an imperative.


You’re smart, so you’ve probably already thought about how to protect your company name, product names, taglines, and other marketing material. Perhaps you’ve already taken steps to register your trademarks yourself, or have worked with an attorney but have been unsatisfied with the results.


Whatever stage you are at, there is great value and peace of mind knowing your brand is protected from unscrupulous copycats that would ride on the goodwill built up in your brand. Such competitors may even damage your brand when consumers purchase faulty products or services they think were provided by you.


For these reasons, working with a trademark expert you can trust is immensely valuable. There are thousands of trademark attorneys around the country, and likely hundreds in your area. How do you pick the one that’s right for your startup?


Can you skip the legal fees and bootstrap your trademark protection?


Below I’ve outlined five steps you can take to decide whether you need a trademark attorney and, if you do, how to find the right one.


1) Determine Your Brand Objectives


As you are building your startup, from product development to prototyping to developing a marketing strategy, you will be simultaneously establishing your brand. Trademarks are an important element of your brand because they establish a realm of the market you own in consumers’ minds.


Trademarks are used in a variety of ways:

   to signify a particular brand (think: Nike, Microsoft, Amazon, etc.);

    to signify a particular product (think: Air Jordan, Windows, 1-Click Ordering, etc.);

    or to indicate a mantra or tagline that exemplifies your company’s values (think: Just Do It, Be What’s Next, From A to Z, etc.).


In each of the cases, you want to determine the objective of your trademark. Is it to become so distinctive of your products and/or services that the moment someone sees or hears your trademark, they think of your business? Or is it to describe some characteristic of your product, service, or business, (for example, if you sell insurance and your tagline is “Best coverage, best price”).


If the objective of your trademark is to establish a unique and distinctive brand, then obtaining trademark protection should be a top priority. On the other hand, if the objective is to describe your product, even if in favorable terms, then not only do you not necessarily need trademark protection, your trademark may not even be registrable. More below on this.


If you’re still on the fence or unsure about whether you need to register your trademark, consider that this may be a sign you need to consult with an experienced attorney with expertise in trademark law.


2) Determine Whether Your Trademark Can Be Registered.


As established above, some trademarks can be registered, and others can’t. It depends on what your trademark is and how it is used.


Additionally, it may depend on how long you have been using the trademark. The USPTO generally registers trademarks that signify a particular good or service. The USPTO will not register a mark that is not tied directly to a specific class of products or services.


Note: this does not mean you cannot protect the name of your company if you sell lots of different products and/or services. You will just need to tie the name of your company to those products and/or services in your registration application.


If the products and/or services offered by your company cover a broad range of classes, you may want to consider focusing on the core products and/or services and registering your mark for the other classes later.


Once you’ve established that your trademark is tied to a specific product or service, you want to consider at least two more factors: 1) how similar your trademark is to other trademarks for similar products and/or services; and 2) whether your trademark includes language that is descriptive of your products and/or services, or of some significant characteristic of your products and/or services.


Again, if you’re not sure about any of these factors, it may be a sign you should talk to a trademark attorney.


3) Find an Attorney With Broad Expertise Handling Trademark Matters


Now that you’ve identified you need to register your trademark, or that you need the help of an expert, you can start whittling down the list of trademark attorneys to the one that’s right for you.


The first question you want to ask is: does the attorney offer a comprehensive set of trademark services? Your startup isn’t just some side gig; it’s the next big thing. You may be pitching investors, venture capital firms, or private equity firms. You may be considering an IPO.


In any event, you want to protect your brand with the same seriousness that you build your startup. This means you will want to work with someone who has experience handling a variety of trademark matters, from preparing and filing your application, to responding to letters (called “Office actions”) from the USPTO, to defending your mark if anyone else opposes its registration, to asserting your trademark rights against infringers and protecting your company from frivolous trademark suits by competitors.


While an experienced attorney with expertise handling a variety of trademark issues may be more expensive, the benefits far outweigh the costs long-term. An experienced trademark attorney will give you the right advice at the right time to help you navigate the complexities of trademark law.


A company, firm, or attorney that promises fast and cheap trademark registration won’t be equipped to handle potential issues that may arise in the future. You’ll find yourself looking for other help down the road, often to fix mistakes made by bargain attorneys.


4) Find an Attorney Who is Transparent About Their Pricing


Legal fees can balloon quickly. While I would say that most attorneys are honest, it is easy for a legal matter to “run away” in cost. Thus, it is important to know up front what various trademark services will cost. Often this is presented as “flat fees.”


In addition to the benefit of knowing beforehand how much a legal matter will cost, an attorney that offers flat fees can do so because they are sufficiently experienced handling those matters. Thus, they can manage legal costs efficiently while still getting you the best protection available.


Beware, though, to understand exactly what is covered by a flat fee. If what you really need is consultation, but you pay for registration of your mark, then you might be disappointed when the attorney you hire starts sending you additional bills for the time they’ve spent strategizing with you.


5) Find an Attorney Who Is Easy To Get A Hold Of


It is a running joke in the legal industry that attorneys are notoriously bad at customer service. Throw a rock in any direction and you’ll hit someone who has been ghosted by an attorney.


So, how do you know you’re hiring an attorney that won’t leave you high-and dry? The best way to figure this out is by looking at their intake process. Do they offer free initial consultations? Did they give you their direct phone number or email address? Do they have a physical office where you can meet with them if needed? Do they have online video meeting capability?


Because trademark law is practiced at the federal level, it’s not necessary to just go with some local guy. But, you also don’t need to find the firm with the biggest offices or the firm with the most name recognition.


Rather, you can find an attorney who is experienced, easy to get ahold of, and offers upfront, reasonable pricing. And, by following these steps, you’re practically guaranteed to find the right trademark attorney for your startup.

Conclusion

Finding The Right Startup Trademark Attorney

Finding The Right Startup Trademark Attorney

Here are 5 steps to finding the rights startup trademark attorney for you:

1. Determine your brand objectives

2. Determine whether your trademark can be registered

3. Find an attorney with broad expertise handling trademark matters

4. Find an attorney who is transparent about their pricing

5. Find an attorney who is easy to get a hold of

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