Ten Things to Ask When Hiring a Trademark Attorney (Part 2)
Hiring a great trademark attorney to guide your brand protection can be daunting. The wrong choice can be costly. In Part 1, we explored the first five things to consider. In Part 2 we explore Nos. 6-10 to consider when engaging a trademark attorney. The following questions are a helpful guide to your needs and who can best meet those needs, while being cost-efficient and accessible. A detailed discussion of each follows below. 6. Do you need a global expert for an online business or for dealing with counterfeit goods? 7. Are foreign costs monitored and reasonable, and will your attorney do the work instead of a junior paralegal? 8. What are your rights based upon the facts? 9. If there is a lawsuit, will your attorney work to settle your case, and within a budget? 10. Do you communicate well with your attorney and is he or she accessible?
The brand protection, trademark attorney is your global point person to hire and fire trademark experts in each foreign territory based upon a number of factors that need to be considered.
6. Do you need a global expert for an online business or for dealing with counterfeit goods? Ascertain who is on the U.S. trademark attorney’s team of global trademark associates in territories such as the European Union, Canada, China, and beyond. When International issues arise, and they often do, learn who the foreign associates will be and their billing structure for foreign filings.
7. Are foreign costs monitored and reasonable, and will your trademark attorney do the work instead of a junior paralegal? Does your law firm select foreign associates based upon expertise and cost efficient pricing, or do they refer to each other solely based upon business volume regardless of the pricing you’ll be charged? Large firms often refer to each other solely based upon dollar volume. Not good for your budget! When it comes to counterfeit goods, even smaller brand names that are U.S.-based may need strategies to interact with customs to stop counterfeit goods from being imported from China.
Large firms often refer to each other solely based upon dollar volume. Not good for your budget!
Is the trademark attorney actively involved in the actual trademark filings both in the U.S. and internationally? Or, will foreign filings be relegated to a paralegal or junior associate with limited skills? If so, do you know and trust the attorney who is overseeing the team? The trademark attorney is your global point person to hire and fire trademark experts in each foreign territory based upon a number of factors that need to be considered. Make sure the trademark attorney has a clear understanding of the various international treaties used to achieve maximum international protection, and an explanation of why and when to use them.
Should your trademark application face a third-party challenge, ask for an opinion (but not a guarantee) as to the validity of the claim, and how to best call a bully’s bluff . . . Better yet, find out the likelihood of third-party objections before filing an application. That’s what a good professional trademark attorney is there for.Cheryl Hodgson
8. In the case of a lawsuit, what are your rights based upon the facts? If your needs involve suing someone, or defending a lawsuit for trademark infringement, ask and be willing to pay for an honest legal evaluation of the merits, as well as the risks of pursuing the action before signing an engagement agreement. If someone is threatening to sue you, ask if you are being bullied? Is the mark at issue legally strong or weak? What claims or defenses can be presented and what facts exist to support them? For example, trademark oppositions to stop you from registering a mark at the U.S. Trademark Office can be initiated by trademark bullies who don’t really have a claim. Should your trademark application face a third-party challenge, ask for an opinion (but not a guarantee) as to the validity of the claim, and how to best call a bully’s bluff. Don’t be scared off by an opposition if you have a valid mark and prior rights. Better yet, find out the likelihood of third-party objections before filing an application. That’s what a good professional trademark attorney is there for.
9. If there is a lawsuit, will your trademark attorney work to settle your case, and within a budget? Trademark litigation gets expensive, quickly. How much justice can you really afford? In contested matters, it is helpful to develop a strategy for a negotiated settlement, a business resolution that can be reached early in the proceedings before the meter starts running. Ensure that your attorney understands your desire to keep costs low and that your pockets aren’t bottomless. A litigation budget and timetable are essential for even the largest of trademark owners.
If your trademark attorney is argumentative, bossy, or doesn’t listen to your needs, then look for a new one.
10. Do you communicate well with your trademark attorney and is he or she accessible? Attorneys are taught in law school that reputation is everything, and it is. But this includes not only how your attorney treats the legal profession and the opposition, but also how she treats her client. If your attorney is argumentative, bossy, or doesn’t listen to your needs, then look for a new one. The most important aspect of the attorney-client relationship is to trust your attorney to clearly listen to and counsel you, and be accessible when issues arise.
Before you trademark a name, review this Consumer Guide to the Best Trademark Service to make a smart choice.
