Questions to Ask a Trademark Attorney
Questions for a first consultation with a trademark attorney about registering a business name, product name or logo, covering clearance searches, classes, timelines, fees, objections, ownership and what keeping a registration alive involves.
20 questions, each with the reason to ask it · includes a conversation guide
The questions
Open any question to see why it works.
- 1
What share of your practice is trademark work?
Many general practitioners and business lawyers file trademark applications occasionally. Asking for a share rather than whether they do it separates the person who files weekly from the person who files twice a year.
- 2
Do you handle applications, disputes, or both?
Filing and prosecuting an application is a different skill from opposition proceedings and infringement litigation. If you may end up in a dispute, it is worth knowing now whether that work stays in the firm or gets referred out.
- 3
Have you worked on marks in my industry, and what did you learn from it?
Some fields are crowded with similar names and have their own conventions about what gets registered. An attorney who has worked in yours can tell you where the obstacles usually appear rather than discovering them at examination.
- 4
Based on what I have described, what is your first read on this name?
You are asking for an initial reaction, not an opinion they will stand behind before a search. What matters is whether they raise the obvious issues, such as a name that simply describes the product, or wait to be asked.
- 5
What does a clearance search cover, and what will it miss?
Searches vary from a quick look at the register to a wider review that includes unregistered use, business names and domains. The gap between the two is where later problems come from, so ask what falls outside the search you are being quoted.
- 6
Where should I be filing: nationally, at a state or regional level, or somewhere else?
Rights are territorial, and where you file should follow where you sell or plan to sell. Ask what protection you have without any registration at all, since the answer differs by country and may already cover part of your situation.
- 7
Which classes of goods and services apply to me, and what does each one add?
Applications are filed against categories of goods and services, and each additional class costs money. You want to hear a rationale for every class, not a wide filing that looks thorough on paper.
- 8
Am I filing based on current use or on an intention to use, and what changes as a result?
Where this distinction exists it affects the timeline, the fees and what you will eventually have to prove. If you are not yet trading, ask what evidence you will be expected to produce later and when.
- 9
What is a realistic timeline from filing to registration if nothing goes wrong?
Registration typically takes many months, sometimes longer, and businesses plan launches around a date nobody gave them. Ask separately when you can begin using the name, which is usually a different answer.
- 10
What is the full cost: your fee, official fees, and what triggers anything extra?
Quotes often cover the filing and stop there. The costs that surprise people are the responses to objections, extensions of time, and evidence filings, so ask which of those are inside the quoted fee.
- 11
If the examiner raises an objection, is responding included or billed separately?
Objections are routine rather than a sign something has gone wrong. Knowing in advance whether a response is inside the fixed fee prevents an unexpected invoice at the moment you are least able to walk away.
- 12
How likely is it that someone opposes this, and what would that cost me?
Opposition is where trademark work becomes expensive. Ask for a range and for what typically happens instead of a full contested proceeding, since many disputes settle with a coexistence arrangement.
- 13
If someone is already using something similar, what are my options short of a fight?
Alternatives include narrowing the description of goods, altering the mark, agreeing a coexistence, or buying a registration outright. An attorney who only presents proceed or abandon is not describing the whole field.
- 14
Once it is registered, what do I have to do to keep it?
Registrations require renewals and, in many systems, periodic declarations that the mark is still in use. Missing those deadlines can end the registration, so ask who tracks them, you or the firm, and how you will be reminded.
- 15
Do I need protection in other countries, and when do I have to decide?
There are time-limited windows in which a later foreign application can claim the date of your first filing. Ask what that window is for your situation and what it would cost to use it, because it closes quietly.
- 16
Who should own this mark: me personally, or the business?
Ownership recorded incorrectly causes trouble at exactly the wrong moment, during a sale, an investment round or a founder split. Ask what documentation is needed if a designer or agency created the logo.
- 17
What should I be doing now to build a record of use?
Dated evidence of use in commerce supports both registration and enforcement, and it is far easier to gather as you go than to reconstruct years later. Ask exactly what counts and where it should be kept.
- 18
If I find someone using my mark, what is the first step and what does it usually cost?
Enforcement often starts with a letter rather than a lawsuit, and the range of outcomes is wide. Ask what happens if the other side ignores it, since that decision point is where the real cost begins.
- 19
Who at the firm will do the day-to-day work, and who do I contact?
The person in the consultation is often not the person who drafts the filing or watches the deadlines. Ask for names, and ask how quickly you should expect a reply when something arrives from the registry.
- 20
What do clients in my position most often get wrong?
This invites an experienced answer that no checklist would produce. Common ones involve launching before clearing, choosing a name that describes the product, or filing too narrowly to cover what the business became.
Preparing for the consultation
Practical guidance for the conversation itself.
What to bring
What to bring
- The exact mark you want to protect, written the way you would use it, plus the logo file if there is one. Word marks and logos are treated as separate things.
- A plain list of the goods or services you sell now and the ones you realistically expect to sell within a few years.
- The date you first used the name publicly, and any evidence of it: an invoice, a listing, a dated page, packaging.
- Any names you considered and rejected. A second option is useful if the first turns out to be unavailable.
- Anything you have already received: a letter from another company, a refusal, a domain dispute, or a prior application you filed yourself.
Understanding the answers
Understanding the answers
- Ask for the reasoning behind any recommendation, not just the recommendation. You are paying for judgement about risk, and the level of risk you accept is your decision.
- If you are given a probability, ask what would change it. Trademark advice is rarely a yes or a no, and the conditions attached are the substance.
- Where you do not follow something, say so at the time. Terms such as descriptive, distinctive and specification carry precise meanings that differ from ordinary use.
- Ask for the advice in writing, including scope of work and fees, before instructing anyone.
After you instruct someone
After you instruct someone
- Keep your own diary of deadlines rather than relying entirely on the firm's system, particularly for renewals years out.
- Tell your attorney when the business changes: a new product line, a new country, a name shortened in practice. Registrations can drift out of line with what a company actually does.
- Keep dated samples of use as you go and store them somewhere that survives a website redesign.
- If the relationship is not working, ask what transferring the file to another firm involves. It is a routine request and the answer should be straightforward.