Yesterday in this space I posted a list of questions that business owners should ask of their trademark lawyers (or potential lawyers). Today I provide my answers to the questions. There are no right or wrong answers, but the questions hone in on skills and experience that are invaluable.

  1. How much experience do you have working in the field of trademarks? 1 year? 5 years? 10+years?
    • Fourteen years. I worked as a trademark examiner for the USPTO before starting my own practice in 1999. My firm has registered more than 1,500 trademarks for clients.
  2. Does your practice handle other types of cases, or is it focused?
    • 95% of my practice is in the field of trademarks involving applications for trademark registration or trademark disputes.
  3. Have you ever worked for the USPTO?  Inside experience can’t hurt.
    • I was a trademark examiner from 1997-1999 before starting my own practice.
  4. What are your fees? How much are they and how are they calculated? Are they hourly or flat?
    • Our flat application filing fee covers the entire application process (except appeals and oppositions) other than the government’s filing fees.
  5. What do your fees for a trademark application include? What happens if the USPTO requires more information or initially rejects the application, are there additional charges to respond?
    • We do not charge any additional fee for responding to the USPTO once the application is reviewed. The flat fee is all-inclusive. After the application is filed and reviewed, the USPTO requires more information, arguments in support of registration, the submission of additional evidence of use, or some other response. We do not bill attorney fees for any of these items. This flat fee allows for predictability as to the total cost of the trademark application process and ensures that both the applicant and attorney are seeking to get the trademark registered as quickly and efficiently as possible.
  6. How do you keep abreast of developments in the field of trademark law? Are you active in associations? Have you attended or given continuing legal education trademark programs in the last year?
    • We are active in several associations covering trademark and intellectual property law. Erik is an editor of the trademark chapter for the ABA’s 2011 Annual Review of Intellectual Property Law Developments and a Co-Chair of the Marketing & Advertising Subcommittee of the American Bar Association’s Cyberspace Law Committee. In 2010, Erik spoke on a trademark panel featuring the Commissioner of Trademarks of the USPTO.
  7. How many registered trademarks do you own? Do you practice what you preach?
    • I own seven registered trademarks.
  8. How do you keep track of deadlines with the USPTO? Do you have customized software?
    • We have developed and use our own proprietary sofTMwareSM software for managing our cases including daily tracking of all deadlines and syncing with USPTO status changes.
  9. How many trademarks have you registered? 10+? 100+? 1,000+?
    • Our firm has registered more than 1,500 trademarks for clients in the United States since 1999.
  10. How large is your staff? Do you use paralegals or outsourced contractors to work on trademark applications? Do you personally handle or directly supervise all the work on a client’s application?
    • Partner Erik Pelton and Associate Mark Donahey personally handle or supervise all correspondence with the USPTO and with clients. We do not outsource any work outside of our office.
  11. Have you received any awards or recognition?
    • Named a Top 10 trademark filer by NameProtect’s Trademark Insider three times; Quoted by the New York Times and numerous other publications in articles about trademark law.
  12. What type of content have you created so I can learn about you and about your trademark experience? Do you blog, write articles, or create videos?
  13. How many oral arguments have you handled before the Trademark Trial and Appeal Board (TTAB)? The TTAB is the reviewing administrative court or the USPTO. They interpret most of the laws and regulations that the USPTO trademark examiners must then follow.
    • Our firm has argued in person before judges from the TTAB more than seven times in the last two years.
  14. Do you offer a free consultation?
    • Yes!
  15. How does your firm keep up with the latest developments affecting intellectual property online, in social media, and mobile applications?
    • In addition to studying current developments and frequently lecturing on these topics, we actively participate in them. Our firm operates numerous websites and social media platforms, and in 2010 we developed one of the first intellectual property law iPhone® applications, called Apptorney® IP.


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