Are you thinking about filing to protect a trademark or trademarks with the USPTO. Here are ten questions that I recommend you ask of any potential representative or counsel:

  1. How much experience do you have working in the field of trademarks? 1 year? 5 years? 10+years?
    • Seventeen 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. Have you ever worked for the USPTO?  Inside experience can’t hurt.
    • I was a trademark examiner from 1998-99 before starting my own practice.
  3. 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.
  4. Are you an attorney providing legal advice? If not, what type of advice are you providing? What happens if I need advice about a potential conflict, refusal, or infringement?
    • Attorneys are different than other advisers for a variety of reasons, including coverage by malpractice insurance, and ethical duties.
  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 additional fees to respond to the USPTO once an application is reviewed. The flat fee is all-inclusive. 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 many registered trademarks do you own? Do you practice what you preach?
    • I own more than ten registered trademarks. We create and protect brands for our services, just like our clients.
  7. How do you keep track of deadlines with the USPTO? Do you have customized software?
    • We have developed and use our own proprietary sofTMware® software for managing our cases including daily tracking of all deadlines.
  8. How many trademarks have you registered? 10+? 100+? 1,000+?
    • Our firm has registered more than 2,500 trademarks for clients in the United States since 1999.
  9. 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?
    • At Erik M. Pelton & Associates, our small staff of one or two attorneys personally handle or supervise all correspondence with the USPTO and with clients.
  10. 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?

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2 thoughts on “Ten Key Questions to Ask Any Prospective Trademark Attorney

  1. Pingback: Does your trademark counsel have all the pieces? | Erik M Pelton & Associates, PLLCErik M Pelton & Associates, PLLC

  2. All the questions are really the key point. the question “How many registered trademarks do you own?” is mostly asked by the clients or you can say in the court. Thank you for this amazing blog post.

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