Do you REALLY need a trademark attorney?

Nadaline Webster,

From the outside, the process of a trademark registration is a relatively straightforward one. You create a product. 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 online services supplied by many Patent & Trademark Offices. Get registered. Renew as appropriate and repeat across as many regions as you require.

In real life, however, as with so many things it is not as simple in practice as it is in theory.

Our recent ebook “Top 200 EU Trademark Representatives” ranks 200 European law firms by the volume of trademark applications filed in 2017 and their rate of success in achieving registration for their clients. But is it only a matter of the number of trademarks and the percentage that are successfully registered?

It is no surprise to us to see Rolim, Mietzel, Wohlnick & Calheiros in the top 3 on the list. Managing Partner, Jan Gerd Mietzel is based in the German office in Dusseldorf and has overseen his firms rise to being one of the top filers of new EU trademarks last year. Accompanied by partner, Carolina Calheiros who practises both in Germany and Brazil, they presented a webinar with TrademarkNow on filing strategies in the EU to share some of their expertise with those less familiar with the workings of the unitary system.

The ‘question & answer’ session that followed the presentation allows some small insights into how something that appears so simple on the surface, can actually be a very complex matter. Jan’s answer to the question of whether it is always worthwhile to invest in a clearance search depends on where your business is in the journey. He states that if you are just starting out with either your business or a new product then he recommends a thorough clearance but he points out that there are businesses that will have been using a name for quite some time prior to attempting registration and for those clients, pursuing a name that may face challenges is still their preferred option.

How many clients of one type or another an individual law firm may represent will impact their success rate when viewed solely as a percentage. In reality, most law firms will represent a wide variety of trademark application challenges which will vary from year-to-year. An individual lawyer taking on bigger volumes of names with substantial challenges to registration may end up with a lower ‘registration success rate’ but crucially, their rate of successful registration when compared with the difficulties might actually be exceptionally high - a factor (amongst others) which could not be reflected in our data.

It is worthwhile remembering the complexities of the trademark world in general and your own trademark strategies and values when assessing the merits of any particular professional or law firm. This aside, what key takeaways can an examination of the success rate of registrations at the EUIPO by European law firms offer?

In the first instance, there is an unbelievably small spread between the top 200 firms in terms of their success rates in registration last year. There is less than 16% separating the 200th position at 84.4% to the number 1 spot at an incredible 100%. As a baseline look at one aspect of performance, trademark owners seeking protection in Europe are being exceptionally well served by many of their EU representatives. Success rates such as these are not achieved by accident nor luck but by experience and skill.

The volume of applications being handled by each of these firms is also noteworthy. While we cannot include information on the number of attorneys involved in each particular firm, in many cases a comparatively small number of attorneys are handling large volumes of applications….very successfully. Traditionally, a clearance search was a heavily manual and time consuming process which naturally limited the volume of registrations any lawyer or law firm could process - and in many cases for those still using tools designed by legacy vendors in this space, that remains true. Newer, cutting edge systems that use state-of-the-art machine-learning techniques can dramatically reduce these process times whilst increasing visibility and safety and will 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.

Lastly then, the concentration of applications across classes of goods and services merits a closer look too. A recent paper from Harvard Law Review looked at the problem of trademark congestion and the challenges posed for trademark owners seeking to create original names in a saturated international marketplace. This is likely particularly true in the case of classes such as class 9 which serves as a catchall class for technology and software developments - of which there is no shortage over the past years and is arguably the class best poised for congestion issues that might affect registration success. The top ten law firm with the highest percentage of applications in Class 9 was Rolim, Mietzel, Calheiros & Wohlnick at 54.39%. Their overall associated registration success rate of 99.51% seems to suggest that while applications in this class are rising year on year, the competition within the class does not serve as any impediment to the trademark professionals examined.

There is little enough in the way of previous studies to compare success rates of attorneys in intellectual property offices over the past ten years and how more modern developments have possibly impacted these rates but it will certainly be interesting to monitor how the rise of legal technology will empower attorneys into the future….but for the purposes of today - there can be little dispute that a skilled, experienced trademark attorney can impact the success of your registration!