You did it!
You’ve got a great name for your company or your product.
Now, how do you protect it?
And, more importantly, how much will it cost?
In this post, I’ll go over the following:
- Some of the most important reasons to use a trademark attorney
- What those different services involve
- How much the use of a trademark attorney costs
Why use a trademark attorney?
You hire a trademark attorney to protect your brand.
This can come in a number of different forms, like:
- Choosing the right name for your brand or slogan
- Filing the proper US and international registrations for your new brand name
- Going after other people and companies that steal your brand name
- Getting the right contracts drafted that can protect your brand
- Keeping up with renewal filings and protecting your intellectual property in other ways (copyright, patents)
All of these things can be super useful for both a new business or an established one, for different reasons.
Many new businesses try to save money by doing a lot of the above list themselves. I’ve had a number of clients who have done this – they usually come to me to fix the mistakes they made in the process.
One popular way to save money on trademark work is to use a “done for you” service like LegalZoom or Trademarkia. Their advertising makes you feel like you’re being taken care of by attorneys, but it’s anything but.
You’re basically on your own, with a glorified form-filler filing your application.
The real value of a trademark attorney comes from:
- The discussion of your trademark before any filing has been done
- The clearance search, with a real human going through the results (LegalZoom just checks for exact matches, which are only a small part of the overall search)
- Crafting the best possible description of how you’re going to be using your trademark, in order to maximize your protection
- Filling out the trademark application is just the end result of all that preliminary work.
For most new businesses who are about to pour a ton of time and money into a new brand, this is the most vital part of the process.
It’s also the one most often overlooked.
Let’s remedy that now, by understanding what a trademark attorney does and how much that’ll cost you.
What does a trademark attorney actually DO?
Now’s the time to pay attention:
I outlined a bunch of services that trademark attorneys regularly provide above. Here’s what is actually involved in each, so you can make sure you’re getting the quality of service you deserve for your money.
Choosing the right brand name for your business
This is a big one – probably the most important thing a trademark attorney can do for you.
As I said before, you’re about to put a ton of time and money into building up a brand. It could be for a game, an app, a website, or any other kind of product or service you’re offering.
Picking a name is a tricky business.
There are a many different considerations, a few of which are:
- Choosing something that’s unique and cool
- Making it easy for consumers to recognize and associate with your brand
- Finding a name that won’t get you in trouble for infringing on another name
All three of these are basically summed up with the most important thing that trademark attorneys look for:
Distinctiveness is what makes a trademark strong. It means that there aren’t any other brand names out there for the type of goods and services your offering. It means that the name will make a solid connection between your brand and consumers.
And it means that you’re not infringing on anyone else’s trademarks.
These are all good things, as you can imagine.
They’re also things that can come from a discussion with a trademark attorney, and a comprehensive trademark clearance search.
Filing US and international trademark registrations
This is another vital part of the trademark process that us trademark attorneys help with.
Essentially, filing a US trademark application with the USPTO does two things:
- It puts everyone on notice that you have trademark rights across the United States
- It gives you access to federal courts to file for federal trademark infringement
While a federal registration is something that many clients do with those done-for-you services, they really do a disservice to you.
This is because a proper trademark application should be as broad as possible in order to capture as many of your trademark rights as you can. Without doing a deep dive into that kind of products and services you offer, or plan to offer, the description may not be correct.
Would you trust that to someone you’ve never actually talked to?
Also, there are a number of other issues, such as choosing the correct evidence of your trademark usage, whether to file as an “intent to use” application or wait until you’re actually using the trademark, and the aforementioned clearance search.
All of these are the important services a trademark attorney provides. According to one study, applications filed by an attorney were 50% more likely to be approved for registration.
You can also use the United States trademark registration as a springboard for international registrations in nearly all other countries. These are done through a process under the Madrid Protocol, which is an international trademark treaty.
There’s a central body that handles these, called WIPO. Your trademark lawyer can help you get that application filed based on your existing US registration.
One thing to keep in mind is that you have to get the international registration filed within 6 months from the date you file in the US, in order to keep your US priority date against others. This is vital in cases where someone else has come in and tried to create a competing product before your US registration is complete.
Once that’s done, what else does a trademark attorney do?
Going after people who steal your brand name
So you’ve put your brand out there and started selling something.
You need to police your trademark, in order to keep those trademark rights.
Your trademark attorney can help with this process!
For instance, you’ve published a video game with a unique name, and you notice that someone else has started selling a mobile game with a similar name. In order to retain your protected rights, you need to make efforts to stop this infringement.
When it’s a much bigger company, they will often laugh you out the door if you approach them without an attorney.
This is where people like me come in.
Like it or not, there’s a certain amount of seriousness that comes from receiving a cease and desist letter from a law firm, rather than just from a non-lawyer company or individual. This seriousness can often lead to the infringer backing down or pushing to settle quickly, rather than risk further litigation.
Additionally, various platforms like Apple’s App Store, Google Play Store, and social media sites like Facebook and Instagram seem more likely to respond to an attorney’s request for a trademark-related takedown.
This is particularly true when there’s a federal trademark registration involved (see above).
But what if you want to let someone else use your trademark?
Getting the right contracts in place to protect you
When you want to license the rights that you own, that’s where a well-drafted agreement comes in.
Let’s say you have a popular video game, and you want to have a board game version made. You don’t design and publish board games, so you find a great designer who can do it for you.
Not so fast.
We need to make sure that you have approval over their use of your trademarks, or else you can lose those rights (seeing the pattern here?).
This is taken care of in a trademark licensing agreement, which will also deal with the other terms of the deal, like:
- How long they can use your trademark
- What kind of products they can use it on
- How much they’re going to pay for it
- What happens if you get sued because of something they did
All of this is very important, and needs to be in writing before you start working together!
Keeping up with your ongoing filings
We’re not done yet.
One last thing that a trademark attorney can help with is to keep tabs on the various filings required to keep up your registrations.
The paperwork never ends.
A good attorney will have a trademark docketing system that reminds them when filings are coming up, but it’s also vital that you keep your own calendar for your marks. You don’t want to miss a renewal deadline and risk losing your trademark rights!
In the US, these deadlines are generally after 5 years, 10 years, and every 10 years afterwards.
Ask your trademark lawyer for more info once you’ve registered.
Great, now how much does a trademark attorney cost?
We’re finally here.
I’ll start by saying that I realize attorneys are not cheap.
But there’s a lot of experience, schooling, and wisdom that goes into that hourly rate.
That being said, a lot of trademark attorneys work on a flat fee basis, which helps you gauge how much you’ll have to spend before you commit.
I know that’s how I prefer to work.
So, for things like the following, I generally quote clients a flat rate before starting:
- Trademark clearance and registration
- Drafting contracts like licensing agreements and coexistence agreements
- Filing trademark takedowns and sending cease and desist letters
How much will it cost, though?
The price of a trademark attorney can vary depending on their experience and the size of the law firm. Then again, a very small firm that focuses on a very niche type of law can charge a high hourly rate.
You’re paying for that specific experience.
For instance, I almost exclusively work with video game and board game developers and publishers. Because of this, clients specifically seek me out because I know all about their industry and what they need.
While the attorney around the corner may be able to draft your will, I wouldn’t necessarily trust them with drafting a video game publishing agreement.
Average trademark-related legal fees
For the common trademark-related services I discussed above, you’re probably going to pay the following:
- Trademark clearance and application filing – $800-$2000, plus fees
- Sending a cease and desist letter – Usually 1-2 hours of time, so anywhere from $300-$1000
- Responding to a refusal of your trademark application – Usually 3-4 hours of attorney time
- Filing trademark-related takedowns – Should only take 15 minutes or so, billed hourly
- Filing international registrations – Cost can vary wildly depending on the countries to register, but usually in the thousands of dollars
- Trademark-related contract drafting – $500-$2000 or more
However, these costs can vary wildly depending on the specific attorney or law firm. Most will be happy to do a free consultation to discuss, or just tell you the cost outright.
Also, the specific costs may vary, obviously, depending on the complexities of the particular job.
If you’re interested in hiring me for trademark consultation, registration, or any other legal service, click over to my contact page and make a consultation appointment or send an email.