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How to Hire a Trademark Attorney Part 1

Top Ten Things to Ask Before Hiring a Trademark Lawyer

Ask these 10 things when you want to hire a trademark attorney

For most people, finding and hiring the right attorney can be daunting. When it comes to identifying a trusted trademark attorney to guide your brand in the global marketplace, the task can be even more daunting. Choosing the wrong trademark attorney can be costly.  In Part 1 of two parts, (How to Hire a Trademark Attorney Part 2), we explore the first five things you need to know.

Knowing the answers to the following questions will help guide brand owners in identifying this valuable brand team member.

1.  What types of services do you need?  2. How much experience does the trademark attorney have? 3. Do you need an Internet expert?  4.  Will you have a large number of domains to manage? 5. Are you looking for a one-time transaction, or a meaningful relationship?

The I-Brand trademark attorney has an awareness and understanding of Internet marketing and advertising issues as well as the interplay between domains and trademarks.  The expert trademark attorney can offer honest, tough love advice. . .— Cheryl Hodgson

1.  Understand the expertise you need.  For example, patents, trademarks, and copyrights have by long-standing tradition been marketed together as “Intellectual Property.” However, in the digital age, each of these areas are separate and distinct specialties. Most non-lawyers do not understand the difference. Specialization in patents does not automatically mean expertise in trademarks. Patent attorneys are engineers by training and are often more technical in their approach since they are dealing with issues pertaining to chemicals, mechanics, electrics, and biotechnology. Find out the true focus of the attorney you are speaking with.

2.  Experience and training of the trademark attorney. Unlike some legal specialties that require additional certification training, such as family law, tax, or patents, expertise for a trademark attorney is most often developed through mentoring and hands-on experience. With the advent of online filings, trademark registration can appear deceptively simple. Knowing how to navigate the Trademark Office website does not make for an expert trademark attorney. Understanding what to file and how to properly describe the goods and services comes only from training and experience.

A thorough understanding of the legal principles governing what can be protected as a trademark can mean the difference between obtaining a registration or not, and whether the registration is worth the paper it’s printed on

3.  Understanding Marketing and the Internet. Today’s trademark attorney should have an understanding of Internet marketing and advertising issues as well as the interplay between domains and trademarks.  The trademark expert can offer honest, tough love advice on how to select and protect a strong brand name, including occasionally telling clients to dump a chosen mark and start over. The expert is able to review and analyze the results of a search report, and offer strategies on what and how to file, while positioning the brand name to avoid pitfalls.

4. Domains present special issues. While recovery of domains from cybersquatters is relatively uncomplicated and inexpensive, specific elements must be proven and the trademark owner has only one bite at the apple. Your action must meet all of the requirements the first time around. Make certain the trademark attorney has training and proven success in these types of proceedings. It’s best not to engage an attorney that is only dabbling in trademarks to protect valuable brand names.

5.  Is this a  one time transaction or a meaningful relationship. The dedicated I-Brand trademark attorney has feelings too. Unlike cheap one-shot filing services, with little expertise in the subject matter, the I-Brand lawyer is a dedicated professional advisor looking for a meaningful relationship. Are you?  The best answer is “yes” if your goal is to grow a valuable brand.

The expert trademark attorney is there through thick and thin, to offer advice and counseling as you navigate the surprising hairpin turns of e-commerce. An aspiring brand owner is better off looking for a team member and trusted advisor, not a one-time pit stop.— Cheryl Hodgson

Will your brand have a strong online presence and attract an international client base? If so, foreign registration strategies are important and can be quite complex. Various treaties are used to facilitate foreign filings, but not all countries are members of each. Foreign associates may need to be hired to file dir ectly in certain countries, and using the treaties are not always the best tactics. In addition, proven expertise in global domain name management and dealing with domain name poaching is an important skill set. U.S. based businesses often find brand names and websites knocked off in other English speaking countries, including the UK and Australia.  Read Part II here

By Cheryl L. Hodgson

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