How To Choose A Trademark Attorney

Do you even need a trademark lawyer?

Nowadays, there are so many options for filing a trademark application with the USPTO. Just like anything else on YouTube, you can even find do-it-yourself videos on filing trademark applications. With all this free advice readily avaiable, why do you even need to choose a trademark attorney?

Time Is More Valuable Than Money: How A Good Trademark Attorney Will Save You Time (and money!)

Did you know that the backlog at the USPTO is roughly 8-10 months for a trademark application? That means that it can take almost a year from the filing date of your trademark appliation before a USPTO examiner (“examining attorney”) reviews it. If everything goes smoothly, great! You’ll be on your way. But, what if it doesn’t work out the way you planned? What if you get a refusal? What if a third party opposes your trademark application?

Lawyers with integrity will not guarantee results, but experienced trademark attorneys can help you navigate around potential obstacles to reduce risk. Instead of promising you a result, we seek to put you in the best position to get your desired results. So much of what happens in a successful trademark registratoin occurs before the application is filed.

What pre-filing due diligence can increase your probability of success in registering a trademark?

An experienced trademark attorney knows how to do a knockout search for similar live trademarks in the USPTO trademark database. It’s not simply a matter of searching for exact marks (basic word mark search), which anyone can do. I prefer to delve deeper by using the Free Form search of TESS.

With the Free Form option, a searcher can use a variety of different fields to search for trademark filings. Moreover, you can truncate words in order to find more search results.

For example, suppose your trademark contained the term BICYCLE. It would be helpful to find any plural versions of the (i.e., BICYCLES) and any present participles or gerunds (e.g., BICYCLING). You will also want to search for nicknames and abbreviated forms of word (e.g., BIKE and BIKING).

Does your trademark contain numbers, dashes or special punctuation? If so, it may be prudent to search for marks that contain variations of those characters.

This is what experienced trademark attorneys do. Consider the value of saving a year’s worth of time by finding similar marks upfront. Having this knowledge earlier gives you the opportunity to pivot to a new mark before filing your trademark application.

Even if you decide to move forward with your original mark, the trademark search results can help shape your identification of goods and services. In particular, your description of goods and services can be carefully crafted to minimize overlap with those of the registered marks found in the search.

What should you do if your trademark application is opposed?

It’s always a bit of a downer to receive a notice of opposition after your trademark application had been approved. In some cases, however, there may be hope for an early settlement that would not require a huge investment. Sometimes the opposer is looking for coexistence or a certain compromise that might allow for your trademark application to proceed to registration.

If there is a chance that the opposer may settle for something less than killing your trademark application, you want a trademark attorney familiar with TTAB trademark proceedings who can guide your case to an amicable resolution.

Need to choose a trademark attorney?

Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you avoid delays and obstacles in registering your trademark.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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