What are the pros and cons of filing your trademark using traditional law firms and attorneys?
Learn all about it in this video:
Hi, I'm Andrei Mincov, and in this video, I'll walk you through the pros and cons of filing your trademarks through traditional law firms and attorneys. There are thousands of websites, law firms, attorneys, trademark agents who promise to help you trademark your brands. But essentially, there are just 4 radically different ways to do it.
You can file your trademarks yourself. You can use an online trademark filing service. You can go with the company I founded, Trademark Factory® or you can use traditional law firms and attorneys. And in this video, I'm going to explain the benefits and dangers of using such firms and lawyers. I'm also recording videos about the benefits and dangers of online trademark filing services and of filing your trademarks yourself. Make sure you watch them as well. So let's go through the pros and cons of traditional law firms and attorneys.
Traditional trademark attorneys, trademark agents, and law firms are usually good at what they do. The problem is, they run a pay-per-hour business. While some of them charge a flat fee for problem-free trademark applications, they start charging by the hour when the Trademarks Office issues an office action. Since nobody can predict how many office actions the Trademarks Office will issue or how many hours it will take attorneys to respond to such office actions, the clients never know how much the entire process will cost until it’s over.
Just so you know, 68% of all filed trademark applications receive at least one office action from the Trademarks Office. That's two thirds. And some of them require hours upon hours of work to respond to. In fact, it is not uncommon for brand owners to pay $5,000+ and even more in complex trademarking cases. If the trademark is eventually refused, do not expect these fees to be returned to you: you’re paying for lawyers’ time, not for results.
This is a viable option for business owners who are serious about their brands but don’t mind paying by the hour for responses to office actions and don’t need a money-back guarantee in case their trademark is refused. Here are the advantages of using traditional law firms and attorneys to do your trademarks. Most importantly, the entire trademarking process is handled from start to finish by attorneys and trademark agents. In other words, they know what they're doing. Yes, there are more and less experienced ones out there, but overall, most are capable of doing whatever needs to be done to help you with the trademarking process.
Advantage #2 is that law firms and attorneys who specialize in trademark law have a high rate of success. Much higher than self-represented applicants or those who use online trademark filing services.
Advantage #3 is that most of the time, they can help you with other legal matters. Very few firms and attorneys limit their services to just trademarks. So if you need a contract drafted or you need to sue someone for trademark infringement, they may be able to help. The quality may suffer but at least they can get something done for you. However, there are also a few disadvantages:
Disadvantage #1: At best, only the most straightforward cases are covered by their flat fees (15-20% of the cases). Beyond that, you will be paying by the hour without knowing how much the entire process will cost. I used to work for the largest international law firm. I know everything about billing in 6-minute increments. You pick up the phone and leave a voice mail? Here's your point one. Do you send a short email? Here's your point two. Do you drive home thinking of your client's case? Here's point five. Do you discuss your client's case with a colleague over lunch? You both record point four.
And so on and so forth. This is how we get all the horror stories about trademarking that started with a simple payment of $500 and ended up costing over $7,000. This is because of Disadvantage #2: Responses to substantive Office Actions, Examiner's Reports, Objections, and Refusals are not covered by the flat fee. Expect to pay $300–$500 per hour.
You don't need to be a mathematician to see that a response that requires 20 billable hours to prepare will cost you a fortune. And even though not every response is going to require so much time, it is not at all unusual for an office action to be so complex that a whole team of lawyers spends hours upon hours crafting an argument against objections raised by the Trademarks Office.
And finally, Disadvantage #3: No refunds for refused trademarks. No money-back guarantee. If you pay for time, you buy time. And the time they will spend on your behalf. Plenty of it. They will tell you that lawyers are not allowed to guarantee a result. But that's a lie. Indeed, there are regulations that prohibit lawyers from promising their clients a specific outcome when there may be multiple variables of why the outcome might not be achieved. In the case of trademarks, it could be other previously filed trademarks, it could be subjective opinions of the trademark examiners, it could be third-party oppositions.
There are things completely outside of the lawyers' control. So no one can promise that your trademark application will be registered. That's OK. But nothing prohibits a lawyer from guaranteeing to refund you everything you paid him if the result is not achieved. It's just that traditional law firms and attorneys don't have the courage to do it.
They just do what they do best: bill you for their time. So as a summary: traditional law firms and attorneys will usually get the job done right, but you won't know how much it will cost until it's over. You will have an attorney or a trademark agent handling your case from start to finish. You will have someone help you figure out what should go into your trademark application. You will have someone helping you gather the necessary evidence to demonstrate the use of your mark. You will have someone who can respond to all possible office actions issued against your trademark application. But except in the most straightforward of cases, you will be paying for their time to deal with your trademarks.
When your application is rejected, do not expect any refunds. By way of comparison, Trademark Factory® gives you the coverage traditional law firms offer while making it easy for you to budget the whole thing. Every single step of the trademarking process is handled by experienced attorneys and trademark agents.ONE flat fee covers the entire trademarking process, from filing to registration, and provides insurance for ALL office actions. Trademark Factory® gives you the certainty of knowing your trademarking budget upfront, no matter how many objections are raised against your application.No hidden costs and no billable hours. You pay once and never see another invoice. Everything is covered by a 100% money-back guarantee. Your trademark is approved—or you get a FULL refund. And yes, we have a 99.3% rate of success.
This is the best option for business owners who are serious about their brands and who want to know exactly how much the entire process will cost before they get started. This is also the best option for business owners looking for insurance in the form of a full refund in case the trademark application is refused. Having said that, our flat fee may seem too high for those whose business is more of a hobby than a serious endeavor. But hey, if you're considering filing your trademark through a traditional law firm, chances are you'll end up paying them more.
Also, we've discovered that large corporations may prefer their trademarks to be handled by an in-house legal team or a full-scope law firm—because the advantages we offer as a firm that focuses on trademarking and nothing else may be less important if you are already spending high 5 or even 6 figures on lawyers. But if you are a startup, an entrepreneur, or a small business and you want to get your trademarks done right, we could be a good fit for you. Simply follow the link in the description of this video—and see for yourself. And until then, I'll see you in the next video.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.