2.5 Million Reasons Why You Need A Trademark Attorney

Lisa Wright,

From the outside, the process of federal trademark registration in the U.S. appears to be a relatively straightforward one. You create a product or service. Give it a name. Decide that you need to protect that name. Run some clearance searches. Discover that your name is not quite as original as you thought. Think a bit more about the name. Find one that is protectable. File it using the TEAS online service supplied by the United States Patent and Trademark Office (USPTO). Get registered. Watch, police and protect your trademark against similar applications by potential third party infringers. Renew as appropriate and, if you are looking for an international trademark strategy, repeat across as many territories as you require.

Changes in the USPTO trademark filing process

However, as of August 3, 2019, if you are a foreign-domiciled applicant you are now required to appoint an authorized U.S.-licensed trademark attorney to represent you before the USPTO. As per the USPTO website: “Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States.”

2.5 million reasons why you need a trademark attorney 

In reality, however - as with so many other things in life - applying for a trademark registration in the USPTO is not quite as simple in practice as it is in theory. As a trademark applicant, registrant, or party domiciled in the United States or its territories, going it alone carries additional risks. The USPTO could reject your application because your trademark candidate is too similar to another registered mark (at last count there were over 2.5 million valid trademarks in the USPTO). Or the USPTO could reject your application on other terms of absolute or relative grounds. According to USPTO 4th quarter FY 2019 data, around 83% of TEAS applications receive office action rejections.

4 ways a U.S.-licensed attorney can help

And, the USPTO agree. Irrespective of whether you are foreign-domiciled or whether you are a party domiciled in the United States or its territories (and therefore not obliged to hire a U.S.-licensed attorney to represent you) the USPTO point to 4 factors where having a trademark attorney guide you through their registration process can really boost your chance of getting a successful trademark registration. Trademark attorneys can help you:

What makes a great trademark attorney? 

There is a significant difference between ‘a’ trademark attorney and ‘a great’ trademark attorney. What constitutes ‘great’ in this context is a trademark attorney who is the right fit for your business model and stage, your experience and knowledge, your personality (and that of your business or products), the industry that you operate in and where you want to go as a business.

A great trademark attorney will become an invaluable business partner for your fledgling enterprise and beyond. 

Top 200 USPTO Representatives

We surveyed the top 200 USPTO representatives in November 2019 to find out what defines this cohort of successful attorneys - to discover what they have in common. We asked about their experience, teams, workload, goals, career satisfaction, skills and more. And, we got some interesting insights into the driving forces behind their success. Our survey findings of trademark professionals in the US show that their most important goal is client care and satisfaction and this is certainly borne out when examining success rates at the USPTO. 

The volume of applications being handled by each of these representatives is noteworthy. Top 200 USPTO representatives account for over 67 thousand, or 14.4%, of trademark applications filed in the USPTO in 2018. They successfully registered over 35 thousand trademarks (16.8%) with a total success rate of 52.1%, compared to the USPTO average success rate of 45.2% by the time the ebook was published.

Filing and Registration Activity graph-01

In many cases a comparatively small number of attorneys are handling large volumes of applications very successfully. Overall there is a large spread between the top 200 representatives, in terms of the number of applications filed last year. The USPTO representative positioned first on the list filed an incredible 1841 applications in 2018, compared with 159 applications filed by the representative placed 200th on the list.

Do the top 200 USPTO representatives use legal tech to boost their super powers?

According to our survey, over 90% of respondents are using trademark clearance solutions and over 50% are using more than one provider.

Are you currently using legal tech tools to speed up your tademark clearance process_-01

Newer, cutting edge systems that use state-of-the-art machine-learning techniques can dramatically reduce the time required for the trademark clearance process. They allow lawyers to increase the volumes of applications that they can handle for their clients (or indeed their companies for in-house counsel) whilst maintaining exceptionally high standards. The number of law firms and companies adopting these tools is growing very rapidly.

Final thoughts

It can be challenging to underline the importance of getting an expert legal opinion when it comes to your trademark and brand protection and registration.

And as 90% of the top 200 USPTO representatives respondents to our survey are already using  legal tech tools to speed up their trademark clearance process, it will certainly be interesting to monitor how the rise of legal technology will continue to empower attorneys into the future. For the purposes of today however - there can be little dispute that a skilled, experienced U.S.-licensed trademark attorney can impact the success of your registration!

Learn more

You can gain further insight into recent filing and registration activity, processing times, overall success rates and success rates per Nice class at the USPTO in our eBook: “Top 200 USPTO Representatives in 2018”.  Our eBook also uncovers the secrets of their super powers!

Top 200 USPTO Representatives

This article is based on the "Do you REALLY need a trademark attorney?" blog by Nadaline Webster published in March 2018.