11 Questions to Ask a Trademark Attorney

Having experts in your corner is always important when you’re building a business. Hiring an experienced trademark attorney can reduce your stress and help the registration process move along quickly and smoothly.

A good attorney can advise you on the strength of your trademark application, help you fill it out accurately, handle the paperwork, and communicate with the United States Patent and Trademark Office (USPTO). So, how do you know if you’ve found a good trademark attorney? You’ll want to interview potential candidates to make sure they’re a good fit.

Top questions to ask a trademark lawyer

Trademark lawyers must be licensed to practice law in the United States and should have experience representing clients before the USPTO. Beyond that, their qualifications and background can vary widely. As you’re interviewing, keep the following questions to ask a trademark attorney in mind.

1. What’s your experience in trademark law?

Asking about a trademark attorney’s experience helps you know if they can handle your case. Experienced attorneys are better at navigating tricky legal situations and can offer valuable advice. Ask specifically about their years of practice, the types of cases they’ve handled, and any special training they’ve received. Make sure they have a good track record in trademark law specifically. It’s also helpful to ask about their success rate and ask for examples of how they’ve helped clients protect their trademark registration successfully.

2. Do you specialize in any specific industry?

Different industries have unique trademark challenges. For example, tech companies often face challenges related to the use of similar-sounding or generic terms. Apple has had trademark disputes over both its name and its use of “i” in iPhone, iPad, and so on. Ask the potential trademark attorney to share relevant examples of their work and tell you about how they dealt with challenges. An attorney familiar with trademark law in your industry will be able to give you better advice and foresee potential issues.

3. How long do most of your cases take? What affects the timeline?

Trademark registrations can take months or even years, so understanding the potential timeline can help you plan better. Ask the trademark attorney how long their cases usually take and what factors might speed up or slow down the process. They should know that an accurate, complete trademark application, clear and distinctive mark or marks, and proper classification of your goods or services can help speed up the trademark process. On the other hand, delays can occur due to issues with the application, opposition from other trademark holders, or the need for additional information.

4. How do you approach trademark searches?

A comprehensive trademark search can also help speed up the process by reducing the chance someone will object to your application. Ask how the attorney conducts trademark searches, whether they cover international trademark registration, and how they handle potential conflicts. They should explain their process for checking databases and resources to ensure your registered trademark is unique. Their answer shows the depth of their trademark search skills and how careful they’ll be in protecting your brand.

5. Do you recommend I get a registered trademark?

Common law trademarks offer basic rights but are limited to the area in which you use them. Registered trademarks provide stronger, nationwide protection and exclusive rights under federal law. Which type you need depends on your business situation, and this question helps you figure that out. To answer, the trademark attorney will evaluate your market, competition, and future plans. Their answer can help you understand the benefits of trademark registration and whether it’s worth the investment.

6. What are the most common reasons you’ve seen for a trademark application to be rejected?

You don’t want to end up in front of the USPTO’s Trademark Trial and Appeal Board (TTAB), and knowing common rejection reasons can help you avoid mistakes on your trademark application that might put you there. The attorney should share examples such as similar existing trademarks, unclear descriptions, or using generic terms and tell you what steps they took to fix the rejected application. This gives you a clear picture of the trademark registration process and also tells you about the trademark attorney’s problem-solving skills.

7. Do you think I have a strong trademark case?

Understanding the strength of your case helps you decide if trademark registration is worth it. The attorney should analyze your trademark and compare it to others to determine if it’s “confusingly similar,” which means too similar to an existing trademark. They’ll also point out if it uses generic terms, like “Computer Store” for a business selling computers, or words that simply describe the product, like “Creamy” for a brand of ice cream. This question gives you an idea of how to move forward without wasting resources.

8. What is your strategy for dealing with trademark infringement issues?

Your attorney is more than a trademark registration service. After filing, they’ll also help you protect your brand from harmful trademark infringement. Ask about their experience with infringement cases and how they plan to help you protect your rights and resolve disputes. They should outline their approach for sending cease-and-desist letters, negotiating settlements, or going to court if necessary. Experienced trademark attorneys are proactive and prepared to defend your trademark rights.

9. What steps should I take in the future to protect my trademark?

Your trademark attorney can take care of a lot, but some things will be up to you. You’ll need to stay aware of any potential infringement, remember to renew your trademark registration, and make sure you always use it consistently and correctly to maintain its distinctiveness. Your attorney will likely recommend regular audits of your trademark portfolio, training for your staff on proper trademark usage, and other strategies for expanding your trademark protection.

10. What do you charge for your services?

No list of questions to ask a trademark attorney is complete without the question of money. Ask about the attorney’s fees for different services like consultations, trademark searches, and trademark filing, as well as their billing method, whether hourly or flat rate. It’s also useful to ask about any additional costs, like government filing fees, so you have a complete picture of the financial commitment involved.

11. How do you communicate with clients?

Registering trademarks can be complex, and good communication is key to a smooth legal process. Make sure you’re in sync with your lawyer about your preferred communication channel, like email or phone calls, and how often they’ll provide updates. Also, ask about their typical response times, availability for meetings and calls, and whether they will be your primary contact or you’ll be assigned to someone else in the office. Their answers will tell you where their priorities lie.

How to find a trademark attorney

You know the best questions to ask a trademark attorney—but how do you find an attorney to ask? Here’s how to find a reputable, licensed attorney.

Ask for recommendations

A referral from someone you know and trust is often the best way to find legal services, and the same is true for trademark lawyers. Reach out to family, friends, mentors, and your professional network for recommendations. Ask about their experiences, the attorney’s responsiveness, and whether their trademark registration was successful. Recommendations from others in your industry are especially valuable, as you’ll probably face similar legal challenges during your trademark application process.

Look for trademark attorneys near you

In the digital age, everything starts with the internet. So why not start your search there? You can simply search for “trademark attorneys near me” and do your own research into their qualifications, customer reviews, and experience in trademark law. You can also look up your local bar association and use their directory. Bar associations often have detailed profiles, including specialties, experience, and client reviews, and might even have referral services to help you find qualified trademark attorneys in your area.

Search LegalZoom’s online attorney directory

At LegalZoom, we believe that trademark filing doesn’t have to be hard, and that starts with finding an attorney. We offer an easy-to-use directory for finding vetted attorneys for a variety of legal services, including trademark registration. Just choose your state and area of law, and you’ll see profiles of trademark attorneys near you, including their practice area, professional background, and associated law firm. If you prefer a streamlined, user-friendly way to find a licensed attorney and register a trademark, start with LegalZoom.

FAQs about finding a trademark attorney

Do I need a trademark lawyer to register a trademark?

If you live in the U.S., you don’t necessarily need a trademark attorney, but most people choose to get one. Even the United States Patent and Trademark Office (USPTO) strongly encourages every applicant to hire an experienced attorney to help ensure your trademark application is correct, increase your approval chances, and avoid costly mistakes. If you live outside the U.S. and you want to register a trademark here, you will need to hire a U.S.-licensed attorney.

Is a trademark attorney the same as a patent attorney?

No. While they both fall under intellectual property law, they’re slightly different. Trademarks protect words, phrases, and symbols used to distinguish one company’s product or service from a competitor’s product or service. Therefore, trademark attorneys handle the registration and defense of brand names, logos, and related materials. Patents protect inventions, such as a process, machine, or manufactured item. Patent attorneys, therefore, focus on registering and defending someone’s sole right to an invention or new technology.

Should I create an LLC before filing for a trademark?

Yes, you’ll typically want to create an LLC (or other business entity such as a corporation) before you start the trademark registration process. This way, the business will own the trademark instead of you personally, which can help protect your personal assets and simplify business operations. It can also help prove that the trademark is “used in commerce,” one requirement of a trademark application. Plus, if you plan to operate your business and use the trademark under the business, it must exist before you file the application.

What should I bring to the initial consultation with a trademark lawyer?

For your initial consultation with a trademark lawyer, bring any existing trademarks, your business name and logo, a description of your products or services, and details on your market and competitors. The meeting is your chance to learn more about trademark law and ask any questions you may have, and this information helps them understand your needs and provide accurate advice.