Why Should I Hire a Trademark Lawyer?
It’s a question that I hear on a regular basis. Sadly, not every potential client that I meet is going to be swayed by my charming personality. From time to time, we all have to look at the dollars and cents to determine whether a business investment is worthwhile. And hiring a trademark attorney is a business investment like any other.
I’m happy to report that there is now a more concrete answer to that common question. University of North Carolina School of Law Assistant Professor Deborah Gerhardt and Professor Jon McClanahan have completed a study of 25 years’ worth of data released by the United States Patent and Trademark Office (USPTO). The purpose of the study was to determine whether there is an advantage to hiring an attorney to file a USPTO trademark application. You don’t have to be a lawyer to file an application – anyone can file the application online. So, again, the question becomes – why should I hire a trademark lawyer?
The study, charmingly titled “Do Trademark Lawyers Matter?,” is scheduled to be published in the summer edition of the Stanford Technology Law Review. The results are clear: inexperienced applicants who hire an experienced trademark attorney are about 50% more likely to have their application succeed.
You’ll notice a few key words in that last sentence: “inexperienced applicants” and “experienced trademark attorney.” I mention the former because some applicants filing on their own behalf are very experienced. You may recognize some of their names: Xerox, Hershey, and McDonald’s. The study took into account the fact that corporations with large IP holdings will often file their own applications without an attorney being listed in the application itself. These applicants are in a different position than the individual who is encountering the USPTO website for the first time. The study goes on to define an “experienced trademark attorney” as one who has filed at least 30 applications.
In the end, after crunching data dating from 1984-2010, the authors determined that the inexperienced individual filer has an average success rate of 57%, while the experienced attorney succeeds 83% of the time. Given the cost of filing and the time involved – it typically takes the USPTO about 6 months to review and respond to an application – this data should provide comfort both to my fellow trademark practitioners and our clients.