The following is an edited transcript of Chapter 12 of my book video Building a Bold Brand: Using and Choosing Trademark Counsel
I get asked all the time, “Can I file a trademark application by myself?” The simple answer is YES. No attorney is necessary. But just because you CAN does not mean that you SHOULD. By attempting to register a trademark without counsel, a business may create more problems than it began with, may incur more expenses than it would have by hiring a professional from the start, and may increase its risk of litigation.
The following are good questions that business owners should ask of any prospective trademark lawyer:
- How much experience do you have working in the field of trademarks?
- Does your practice handle other types of cases, or is it focused on trademarks?
- Have you ever worked for the USPTO? Inside experience can’t hurt.
- What are your fees and what do they include? How are they calculated (hourly or flat)?
- How do you keep abreast of developments in the field of trademark law?
- How many registered trademarks do you or your law firm own?
- How do you keep track of deadlines with the USPTO?
- How many trademarks have you registered?
- How large is your staff? Do you outsource or do you personally handle/directly supervise all the work on a client’s application(s)?
- What type of content have you created and shared so that the public can learn more about your work and experience?
- How many oral arguments have you handled before the Trademark Trial and Appeal Board (TTAB)?
