Working with a trademark lawyer may seem like an elementary task, but there are some tips a brand agency should be aware of that will benefit their relationship with their clients. A trademark lawyer or any lawyer’s role for that matter is to advise on risk. The next time you read an opinion from a trademark lawyer on the availability of a mark, the trademark lawyer will not use definitive language that a particular mark is available. Instead, you will see words like “appears to be available” or “reasonable arguments exist.”
The trademark lawyer uses this language primarily because there is no such thing as a perfect trademark search. Even the most expensive trademark search is incapable of finding every potential conflict. What the trademark lawyer evaluates are signals in the search that, according to the law, would suggest the potential for a conflict.
The first tip for a brand agency is have a realistic attitude about what a trademark search will reveal and the a trademark attorney’s opinion about it. The second tip is a financial one. Most, if not all, trademark attorneys will work on flat fees, but you have to ask. The days of the hourly rate have been under siege lately, and you not only can get budget certainty with a flat fee but likely a lower cost as well.
The third tip relates to the flat fee, which is make sure you understand what is included in the flat fee. If you ask for a flat fee on a trademark search, but not the reporting out of the results or any discussion about the results, then you likely end up with a low ball flat fee only to have a larger hourly rate applying later.
The fourth tip is to do the initial screening yourself. Most attorneys will say about areas of law they do not specialize in that they know enough to be dangerous. Well, the same statement can apply to a brand agency. A trademark attorney will charge more for a trademark search than what it would cost to use an online trademark search engine or to do the search yourself. Get the trademark attorney involved for the final search.
The fifth and final tip is to recognize the value a trademark attorney brings to the search process. A trademark attorney provides the most value on the tough registration questions. If there is a mark that the client loves but your preliminary search revealed a question about its availability, have the trademark attorney conduct a more in-depth investigation to determine if there is a path to a registration.