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  • Writer's pictureTamara Pester

Why I can't stand the "Trademarks on the Side" Lawyer

Updated: Feb 17, 2023

Each year, hundreds of thousands of individuals and companies apply for registration of their trademarks with the U.S. Patent and Trademark Office. In 2021, the USPTO received an historic 943,928 trademark applications, eclipsing the 2020 record total of 738,112 by 27.9%! Of those, slightly less than 50% were approved for publication after examination. In contrast, I am proud that more than 90% of applications filed by my firm have been approved.

All this is just background for me to vent. About six months ago, a woman contacted me, interested in securing trademark registration for a mark she uses for her business. After hearing my fees, she declined to work with me. I get it; because of my experience, I charge a premium and I'm not the best fit for everyone. Then yesterday, she contacted me again about an unrelated matter. Out of curiosity, I inquired about her trademark. She noted that:

Well, I had to withdraw my request. It’s been a hassle. I should have got a trademark lawyer! Ahaha, but my lawyer doesn’t charge much. So, now I’m trying to rebrand and trademark [slightly different mark] because I guess [the USPTO] didn’t like the fact that I would use [original word mark] in different ways. . . I just rebranded my website and I’m trying to include [slightly different mark] in my emails and social media so I can submit proof of my use. I couldn’t just trademark [original mark] and then use it in a sentence.

Now my inquiring mind was really piqued; I checked her application with the USPTO. She didn't get a final refusal or rejection on the original mark. Rather, she got an Office Action simply requesting an alternate specimen of use. I wish she had used a legitimate, experienced trademark attorney, rather than someone who thinks trademarks are a matter of clicking a few buttons on a government website. A seasoned trademark attorney would have been able to counsel her about what an appropriate specimen of use could be. Instead, her "trademarks on the side" attorney apparently scared her not only into believing that her trademark application had been completely rejected by the U.S. Patent & Trademark Office, but also filed a Request for Express Abandonment, thus sealing the fate of the trademark. A knowledgeable trademark attorney would have advised her that she had six months to respond to the Office Action and submit a different specimen.

People like her are exactly why I created the Learn Trademarks class, and why I advise people to PLEASE use an EXPERIENCED trademark attorney, or learn about trademarks themselves. Of course, I love new clients, but I can't work with everyone. A legit trademark attorney has at least a dozen registrations under his or her belt and is not dewy-eyed fresh out of law school. A reputable attorney who handles trademarks works full time in a firm or group that focuses at least 50% of its practice to trademark law; and can provide solid advise that won't confuse or mislead the client. He or she carries professional liability insurance.

On the other hand, a "trademarks on the side" attorney may have taken one or two Continuing Legal Education (CLE) classes about trademarks. Maybe she worked briefly for a legit trademark lawyer and recorded and transcribed everything she said* before starting her own practice, out of her house, right after law school. Maybe they spend all of their traditional work hours doing some sort of low level title searching, while trying to do trademarks at night. Maybe he is an Instagram marketing genius who scours and gleans information from other attorneys and (ironically, for an intellectual property attorney) then passes it off as his own, in his social media posts. Whoever they are. . . . beware of shady lawyers who are out there giving horrible advice and pretending that they have experience when really they're just flying by the seat of their pants. I hope you avoid them at all costs!

Whatever you do, PLEASE consider whether it's worth it to save a few dollars now only to spend more later on redoing your website, rebranding, creating new email campaigns and social media.

*Yes, I know that person! She even uses the exact same language from my pricing packages, in her pricing packages. Beware!

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