Trademark Attorney Advice: How to Select Counsel with Perspective

Intellectual Property

by | Feb 7, 2019

The Role of A Trademark Attorney

A trademark attorney is an attorney who’s familiar with the technicalities of trademark filing. These applications receive a review from the United States Patent and Trademark Office. That professional will help you through the entire trademark process. They will help you respond to the USPTO’s questions or concerns. And of course, they will help you with the maintenance of your trademark.

Essential Trademark Attorney Criteria

When selecting a trademark attorney the first criteria to look for is their experience. Has that attorney practiced before the United States Patent and Trademark Office before? Has that attorney also prosecuted infringement actions related to trademarks? Does that attorney have a good understanding of trademark laws? What about related laws? For example, cybersquatting laws. So I would look for these key attributes.

The best resource for a trademark attorney’s experience level is the USPTO database. The USPTO has a mechanism where you can search for a particular attorney or a particular party. Another way would be to conduct a general search of that attorney’s name. And the trademarks that she or he has applied for. This should yield robust search results.

Trademark Attorney

You should attempt to interact with your attorney at least once a month. This will allow you to get updates throughout the process. The trademark application process can be lengthy. It can range from three to nine months. This depends on the specific issues that your trademark application might have. A good practice is every 30 days reach out to your attorney. This is assuming that she or he doesn’t reach out to you, which they should be doing. Your communication should include the request for an update and a plan of action.

Trademark Attorneys & Long Term Relations

If the trademark or service mark obtains registry with the USPTO. You should definitely maintain an ongoing relationship with your attorney. The reason why is because of the post-registration process. There are requirements that the USPTO has. This causes many businesses to often fail. Because they don’t fulfill those requirements and as a result lose their trade or service mark. Moreover, having a relationship with the attorney post-registration is critical.

Author

  • Ismail Amin

    Ismail’s legal experience encompasses serving Fortune 500 companies, mid-sized privately held companies, and entrepreneurs. He presently serves as Corporate and Litigation Counsel to large and mid-sized businesses throughout California, Nevada, Texas, North Carolina, and New York as well as General and Personal Counsel to high-profile hospitality operators in California and Nevada. Ismail’s practice emphasizes Business and Intellectual Property matters, with a focus on healthcare, biopharmaceuticals, biotechnology, and hospitality. Ismail has counseled the firm’s healthcare provider clients in acquiring or selling assets while maximizing return and minimizing risk. He has helped clients acquire or sell over $1 billion worth of healthcare-related assets, including hospitals.

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