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How To Find A Small Business Trademark Attorney: 5 Steps

How To Find A Small Business Trademark Attorney: 5 Steps

1. Determine how you use/will use your trademark.

2. Determine whether your trademark can be registered

3. Find an attorney who offers a comprehensive suite of trademark services.

4. Find an attorney who offers flat fees or upfront pricing.

5. Find an attorney who is accessible and responsive.

How To Find A Small Business Trademark Attorney: 5 Steps

5 min read time

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 you and your business? Do you even need a trademark attorney?


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 How You Use/Will Use Your Trademark


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 whether your goal is for the trademark to become so distinctive of your products and/or services that the moment someone sees or hears your trademark, they think of your business.


If the goal of your trademark is to describe some characteristic of your product, service, or business, (for example, if you sell insurance and your tagline is “Best coverage, best price”) then not only do you not necessarily need a trademark, your tagline may not even be registrable. More below on this.


On the other hand, if the goal of your trademark is to become practically synonymous with your product or service, then you definitely want to register your trademark.


If you’re still on the fence or unsure about whether you need to register your trademark, read this article here. Also, 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


Some trademarks can be registered, and others can’t. It depends on what your trademark is, how it is used, and how long you have been using it. As a general rule, the USPTO 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.


Once you’ve established that your trademark is tied to a specific product or service your business provides, you want to consider at least two more factors to determine if your trademark can be registered with the USPTO:

   1) whether your trademark is likely to be confused with another registered trademark; and

    2) whether your trademark is merely a description of your product or service, or of some significant characteristic of your product or service.



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


On the other hand, if you’re certain you need to register your trademark, check out this article on how to file your own trademark application.


3) Find an Attorney Who Offers a Comprehensive Suite of Trademark Services


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 question you want to ask is: Does the attorney offer a comprehensive set of trademark services?


Registering your trademark can take months, and in rare cases years, and can involve several complex issues. You 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.


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


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 Offers Flat Fees or Upfront Pricing.


As with every legal matter, the fees for trademark registration can quickly balloon unless you know up front what it will cost. While I would say that most attorneys are honest and won’t bilk you for legal fees, it is easy for a legal matter to “run away” in cost.


An attorney that offers flat fees often knows the field well enough to know how long a matter will take. Thus, they can manage their time efficiently while still getting you the best protection available.


Beware, though, that you understand exactly what is covered by the 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's Accessible and Responsive


It is well-known 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.


You want to find someone who responds to your emails and calls promptly and thoroughly. The best way to figure this out is by looking at their intake process.


    Do they offer free consultations or strategy sessions?

    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?



Because trademark law is practiced at the federal level, it’s not necessary to just go with the local attorney. Rather, you can find someone nationwide who is experienced, easy to get ahold of, and offers upfront pricing. And, by following these steps, you’re practically guaranteed to find the right trademark attorney for your business.

Conclusion

How To Find A Small Business Trademark Attorney: 5 Steps

How To Find A Small Business Trademark Attorney: 5 Steps

1. Determine how you use/will use your trademark.

2. Determine whether your trademark can be registered

3. Find an attorney who offers a comprehensive suite of trademark services.

4. Find an attorney who offers flat fees or upfront pricing.

5. Find an attorney who is accessible and responsive.

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