How to Select a Lawyer to Handle Registering Your Trademark

Once you’ve made the right decision and hired a lawyer to handle registering your trademark, the next trick is to hire the right lawyer to handle registering your trademark.

Trademarks are not like patents. In patents, a lawyer has to have a science or engineering degree and take a separate registration exam in order to represent clients who are applying for patents. In trademarks, any lawyer is technically capable of registering a trademark for you. And that’s a problem.

You need to go to a trademark specialist. Just like you may not know all of the small details that are necessary to properly accomplish the task of registering a trademark, a lawyer who handles wills, divorces, incorporations and other matters may not know of all of the details that are necessary to get things right in the process of registering a trademark. A lawyer really doesn’t know the details of registering a trademark until he has registered a hundred trademarks or practiced trademark law for at least five years. Until then, he will tend to make rookie mistakes in registering a trademark that will tend to cost you time and money.

So, here are some questions to ask in selecting a lawyer to handle registering your trademark:

1. How much of your practice is dedicated to registering trademarks and resolving trademark disputes?

The answer needs to be more than 50%.

2. How many trademarks have you successfully registered?

You are looking for an attorney who has registered more than 100 trademarks.

3. How many trademark disputes have you successfully resolved on behalf of people who had registered trademarks?

You are looking to hear “more than a dozen.” Honestly, you just want to be sure that you’re not buying a parachute from a guy who has never jumped out of a plane.

4. Do you have specialized docketing software to handle the calendaring and docketing of trademark deadlines?

The answer needs to be “yes, we have software that automatically calculates and sends reminders for everything from six-month abandonment dates to post-allowance five-year dates.” Microsoft Outlook is not “specialized software” for handling the process of registering a trademark.

5. Have you ever been the subject of a grievance or a malpractice suit?

If the answer is yes, you don’t want the guy registering your trademark.

6. Do you have malpractice insurance?

The answer needs to be, “Yes.” If a lawyer screws up the process of registering your trademark, and his negligence costs you money, there needs to be an insurance policy standing behind his work to make you whole.

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