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Factors to Consider when Selecting a Trademark
Services Provider
By John M. Huff, Trademark Partners
Small business owners and entrepreneurs are
discovering a new option besides pursuing the Trademark Process on
their own or hiring a high profile law firm to represent them. This
option is called a Trademark Service Provider. As this new business
category has expanded, more providers have opened to serve this
market. The following factors may help you evaluate the companies
available, to find one that works best for you. We use these same
standards at Trademark Partners to benchmark our own offerings.
Search Quality
One of the primary services of a Trademark
Service Provider is the trademark conflict or availability search.
As mentioned earlier, this search should include Federal and
State-registered marks, as well as sources of unregistered “common
law” marks. The quality and depth of common law searches can vary
greatly between providers. Again, seek out the provider with the
most extensive search. At a minimum it should include corporation
and business name filings, commercial phone listings, business and
product name directories, brand name listings, and business and
trade journals in all 50 States.
Research Experience
Another factor to consider is the prior
legal and research experience of the staff, particularly in the
field of trademarks. Look for a researcher with at least three to
five years experience performing trademark searches. The search
strategy is just as important as the sources to be searched.
Legal Services and Representation
Generally speaking, Trademark Service
Providers are used as an alternative to attorneys for conducting
trademark conflict searches and starting the trademark process.
However, some providers do have attorneys on staff to provide legal
opinions about search results, and draft documents. Generally
speaking, an attorney's time and services will be billed at
significantly higher rates than a non-attorney provider.
If the provider does not offer attorney
assistance and you wish to retain one, ask the provider for a list
of attorneys they have successfully worked with in the past. An
attorney may be especially useful if you are unsure of the search
results, unsure of your rights to a mark, or if you require
representation. Note: Unless they are licensed to practice law, a
provider cannot offer legal advice or represent a client before the
Trademark Office or in court. However, used properly they can
provide valuable information and assistance.
Additional Trademark Services
Certain providers offer other services
including trademark development, trademark applications, domain name
registration, and trademark infringement monitoring. Using one
source for these services will help you complete the process without
the complications and delays of multiple providers. The variety of
service options brings us to the next point.
Service Packages
It can be difficult to navigate the options
available from providers. It can also be challenging to figure the
total price for your project before work begins. This is due in part
to the nature of trademarks. For example, there are separate
searches needed for graphic logo-type designs versus name marks, and
for state versus federal trademarks. To avoid questions later,
describe what you need and ask the provider if they have a package
to fit your circumstances. If they do not, ask them to quote the
total cost up front. Also, be prepared to pay standard filing fees
with your trademark application separately from the provider’s fees.
These fees start at $325.00 per Class of Goods and Services when you
file your trademark application online.
Business Experience
If you can find a provider that has business
management and marketing experience, you may have better results
with your trademark projects. While trademark protection has
traditionally been a legal process, the business value of trademarks
has grown tremendously in the last few decades, giving rise to terms
like positioning and brand building. A provider with marketing
experience will be better able to address the business goals of your
trademark and branding strategy, giving you a greater chance of
business success. Some providers also offer creative naming
services, which may be useful if you need to change marks due to the
discovery of a conflict.
Customer Service/Satisfaction
Since you will be working with a provider to
protect your valuable Intellectual Property, consider the
personality and professionalism of the staff in addition to other
factors. They should be willing to answer questions and explain
services in clear, non-technical terms. If a provider seems rushed
or difficult to work with, continue looking until you find one more
committed to your success. To help evaluate providers you may also
ask for references or check online for comments from past clients.
No Search is 100% Conclusive
There is one fact to be aware of about
trademark searches no matter who conducts them, which is that due to
the potential of undocumented “common law” marks described earlier,
no search exists that can guarantee 100% coverage. In legal terms,
however, a thorough search gives you a reasonable presumption that
you have exclusive rights to the mark, and protects you against
claims of infringement later. The general standard is to conduct a
thorough conflict search including common law marks, followed by
application for federal registration. Before or shortly after filing
the application, you are expected to begin using the mark in
commerce.
Conclusion
Trademark Service Providers are not created
equal, and there are many options to choose from. This is the main
reason why we created this list - to help consumers make informed
decisions. The decision of which provider to use, what to include in
your trademark application, and how to implement proper use and
protection of your marks, all have an impact on how your application
will be processed, and the long-term strength and value of your
marks. If you have any questions about these standards, or
suggestions for standards to be included in future revisions to this
article, we would appreciate hearing from you.
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John M. Huff is a Trademark Specialist and
President of Trademark Partners, a trademark service firm that
specializes in helping small businesses and entrepreneurs create and
protect trademarks. He serves clients in Maryland and nationwide. He
can be reached at 1-888-MARKABLE (1-888-627-5225) and at
www.TrademarkPartners.com
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