As noted earlier, the USPTO seeks comments regarding some issues related to the trademark application filing fees. The comment deadline has been extended to October 22, 2012. But it has already begun posting the responses received so far.
Posts Tagged ‘fees’
Ever since I filed my first trademark application for a client more than 12 years ago in 1999, I have charged a flat fee for every one of the several thousand trademark applications I have handled. I believe that all inclusive flat fees best represent the value provided by my services, and also provide an enormous benefit to the client – especially the small business – who cannot budget properly for the many possibilities that a trademark application entails if the total fee is not set at the start.
Many other trademark attorneys advertise ‘flat fees.’ But how many can truly tell you the entire cost of the application from filing to completion, including office actions, allegations of use, phone calls, and more? I know of one – me. There may be others. But the large majority of “flat fee” deals I have seen are deceptive – there is a flat fee for the initial filing but the total cost of the entire application may be much more depending on what happens to the application.
Here is an example of why I believe my truly flat fee best serves the client – even if it is higher than the “initial flat fee” for filing charged by others:
A potential client contacted me. They had already spoken to another attorney who offered to file a one class application for $X plus the USPTO fees. The lawyer’s fee included responses to non-substantive objections to registration by the USPTO. But in the event that the Trademark Examiner makes a substantive objection to registration (likelihood of confusion, merely descriptive, etc.), the fee was not only not included in the $X, it was not even listed or estimated. It represented a total unknown.
And so I responded to the potential client, verbatim:
The devil is in the details :) His flat fee covers “responses to non-substantive objections”.
As you can imagine… substantive responses, when necessary, are the more complicated and time consuming ones. My flat fee includes them.
Of course, I also believe my experience regarding the USPTO is far greater. He has registered about 10 trademarks. I have registered about 1,700.
Needless to say, I am glad to call the “potential client” in this situation a new client.
There is a growing debate in professional (including legal) communities as to whether and how much free content professionals should provide? Does providing free content make you a thought leader? Does it make your advice more valuable? Or does it dilute the value since so much information can be had at no cost?
I am a firm believer that providing a wealth of content is good for several reasons, including:
- Establishes expertise/credibility
- Answers questions and helps people
- Improves search engine rankings
- Improves name recognition and awareness
People searching for free information are unlikely to become good clients/partners anyways. And those searching for information will find it somewhere – why not find it from me? And those who recognize the experience and thought leadership demonstrated in the content will see the value in having such a person “in their corner” advising about the specifics of their situation.
While much of law and the world may be more and more about efficiencies and reducing barriers, there is no substitute for individual, specific advice that pertains to a real world situation. Yes, anyone can fill out a form; but that does not mean they should. I could fill out IRS forms myself, but that does not mean that I would know how to taking advantage of the rules and savings and tools that are possible. I could even try to take apart and engine and re-build it, but I might cause more damage or worse yet hurt myself.
In my field of trademarks, it is probably true that a ten year old — or a computer — can fill in the fields in a trademark application. But that application may not properly reflect the mark, the goods/services, and many other things. Can the automatic form generator analyze and determine:
Who owns the trademark? Is the trademark in use by the applicant? Is there a potential conflict? Should a logo or a standard character mark be filed? Is it is certification mark? Which description of goods or services is the most accurate? How many International Classes are required? What constitutes proper evidence of use? Should I seek maximum protection or the path of least resistance to obtaining a valid registration? Who is eligible to sign the application? Should a logo be filed in color or black and white? Do I have a system established for monitoring and tracking the status of the application to ensure it does not get abandoned? If the trademark becomes registered, when will it need to be renewed? What symbol should be used with the trademark?
These are just a handful of the many questions that can factor into representing a client for “simple” trademark application. The list of questions about doesn’t even address any of the much more complicated questions that may arise if a substantive refusal is issued by the USPTO.
I provide clients with real value because my experience allows me to advise them regarding the many issues and questions that can and do arise in the process of protecting and registering a trademark. As a result, I am not afraid to provide general information and advice in the form of free content on Facebook, Twitter, YouTube, the Apptorney® iPhone application and this IPelton® blog.
I was recently quoted on these same concepts in an online article from SHRM Online: Should Consultants Give Away Intellectual Capital? (member only access) published by the Society for Human Resource Management. Here are a few excertps from the piece by Lin Grensing-
Pelton, an attorney with Erik M. Pelton & Associates, PLLC in Arlington, Va., said: “Generally, my philosophy is that in today’s day and age providing a wealth of information is a good thing and is generally advisable.”
Pelton, who said he provides free information through blogs, podcasts and videos, said: “You may find something valuable in an article, but that can never replace having one-on-one, specific guidance or consultation for a real situation.”
Pelton advised HRconsultants to take steps to protect that information through the proper use of copyright and trademark notices, something that he finds few do…. “Every time there’s original content, whether it’s an article or a video or audio piece, or even a graphic, they should use a proper copyright notice,” he said. HR consultants might choose to file a copyright notice with the U.S. Copyright Office or might decide to trademark their business name or aspects of their practices.
Do you believe that content should be free?
I recently found LawyerClock.com, a simple site with a simple purpose: calculating the cost of a phone call with your attorney(s) by the second based on the number of attorneys and the hourly fee. Users can even adjust to estimate how much money is being spent on “off-topic” time. (“How was your weekend?”!)
Despite trends for flat fees other types of billing, much if not most of the legal world in the U.S. still bills by the hour.
I have never handled a single U.S. trademark application filing for an hourly fee. From day one, 11 years ago, every single one of the more than 2,000 trademark applications handled by our firm has been for a flat and/or contingency fee, even those we took over in the middle of the application process. The client knows precisely what it will cost and the client can call or email with questions as often as they want related to the application. In my opinion, hourly billing is a disservice to all the involved parties. Attorneys should get paid for the value they provide, not for time it takes. Our goal should be success with efficiency.
And clients should know the real cost of something up front. And their fee, at an hourly rate, should not be tied to how many questions they have, or how many attorneys are participating in a conference call, or how much advantage of technology and computers the law firm makes. Shouldn’t lawyers have incentive to learn from their previous work, and to incorporate technologies to make their work and communications more efficient.
We believe that flat fees help us serve the goals posted in our conference room for several years, including:
- To provide high quality legal representation at affordable flat fees
- To educate the small businesses community about the value and benefits of trademark protection
- To become a leading boutique trademark law firm
To Our Clients:
- Provide great customer service
- Answer questions, provide advice, admit when we make mistakes (we’re human)
- Provide great value for flat fees
- Earn each client’s trust, and as a result their repeat business and referrals
To Other Counsel:
- To avoid needless delay
- To be respectful and cordial
- To put our client’s needs before ours
- To respect the rules of the court/Board
As A Staff:
- To learn from our experiences, and are confident in tackling new experiences
- To strive to make ourselves smarter and better every day
- To continuously increase the value provided to our clients
- To work together, and help co-workers improve at what they do
- To provide an environment for law students to learn about trademarks and small law firm practice
- We work to continuously to improve and to be more efficient, thereby providing more value to our clients
Many attorneys will disagree with our flat fee theories, no doubt. And there is no disputing that each application is unique and some may be more work and some may be less. Each client is unique too. But the overall value we provide is consistent from case to case – doing whatever we can to help obtain a registration. (Actually, the value grows over time based on our experience). The important thing is that our clients appreciate the flat fees – they have chosen us to file more than 2,000 applications – and client’s often cite the predictable fee as a factor in choosing to use – and re-use – our firm.
A lot has been written in the last year about flat fees and legal services. Many firms have begun to offer flat fees for some services, or to use other “alternative fee arrangements” blending flat or hourly or performance-based fees.
For example, here are some headlines about the flat fee trend:
- Legal Advice… On A Budget (Wall Street Journal)
- For Legal Fees, It’s More of a Buyer’s Market (New York Times)
- The Skinny on Flat Fees (ABA Journal)
At Erik M. Pelton & Associates, we have charged flat fees for nearly every client and every matter since the start in 1999. Each and every one of the more than 1,300 USPTO trademark registrations we have received for clients has been billed in some form of a flat and fully predictable fee.
Even in more complex matters and litigation, many of our clients opt for flat monthly or quarterly fees. Then they have more predictable costs and are free to make strategy decisions based on the best outcome for the case and for their business with less concern for the time or cost of a particular part of the case such as taking a deposition or filing a motion.
So why the big deal in the media about flat fees now? Because the economy is shaking up a lot about the way law used to be practiced. But not at our firm. We already use technology to be more efficient – having developed our own proprietary case management software. We already use flat fees that include no surprises or hidden surcharges, and that charge the client for the value of our work and experience. Our clients are encouraged to contact us with questions – because we like to provide solutions to their problems, not because we are are charging them for each email or phone call. Our incentive is to deliver quality and deliver it efficiently, not to work each project from scratch because we are measuring time.
If uncertain bills, charges to copies and faxes and mailings, and less incentive to meet your objectives in an efficient manner are what you seek, feel free to seek firms that still bill hourly. If you want a firm which is forward-thinking, technology using, and partnering with client to find solutions that make legal and business sense – at a value based flat and predictable rate – you know where to find us at Erik Pelton & Associates. We’ve been practicing that way for more than 10 years.
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