lawyer what to ask client who wants to get new trademark

Do I need a trademark lawyer?

Even though this might seem expensive, trademark attorneys can offer an invaluable service. A trademark lawyer can conduct an extensive trademark search. This search will go beyond a basic search to make sure your trademark doesn't infringe on other trademarks.

What happens to the law firm after filing a trademark application?

The law firm will keep or pay for, respectively, any surplus or deficit remaining after paying the actual cost of filing the application. The filing fee is not a direct reimbursement; it is an advance legal/service fee paid to the law firm in addition to the client’s trademark package fee.

How does a law firm find a trademark conflict?

For clients who retain the firm for a conflict search: Though the law firm will make a reasonable effort to find any potential trademark conflicts, this does not guarantee that a trademark conflict does not exist. The law firm does not use any specialized search engines or databases to perform its conflict searches.

What is a trademark lawyer search?

This search will go beyond a basic search to make sure your trademark doesn't infringe on other trademarks. A trademark lawyer will conduct a comprehensive search to include federal, state, and common law trademarks, often using professional software. These searches work to find any potential issues that could arise in your trademark filing.

How do you ask someone to use a trademark?

If you want to use someone else's trademark, you must ask the trademark owner for permission to use it.

What kind of remedy is most likely to be first granted by a court for trademark infringement?

Some of the most common legal remedies for trademark infringement include: Monetary compensation. The classic legal remedy in any type of litigation is monetary compensation. In trademark infringement cases, monetary damages are a form of legal remedy that can be sought by an injured plaintiff.

What is necessary to get a trademark granted?

Two basic requirements must be met for a mark to be eligible for trademark protection: it must be in use in commerce and it must be distinctive. The first requirement, that a mark be used in commerce, arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce.

What is the most common defense to an action for trademark infringement?

descriptive fair useThe most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment.

What are 3 things that determine trademark infringement?

Thus, "use," "in commerce," and "likelihood of confusion" are three distinct elements necessary to establish a trademark infringement claim.

What remedies may a successful plaintiff obtain in a trademark infringement case?

If the trademark owner is able to prove infringement, available remedies may include the following:a court order (injunction) that the defendant stop using the accused mark;an order requiring the destruction or forfeiture of infringing articles;More items...•

How long does it take for a trademark to be approved?

12 to 18 monthsUsually, the process takes 12 to 18 months. Registering your trademark is a complex procedure that involves your application moving through various stages. Learning about each stage in the process will help you understand why getting a trademark takes as long as it does.

What are the rules for trademarking?

Simple Trademark Rules and ConsiderationsAvoid Commonly Used or Descriptive Terms. ... Avoid Signs of Trademark Conflicts. ... You Can File a Trademark Application Before You Use Your Mark in Commerce. ... Trademark Applications are Not as Simple as They Look. ... Trademarks Should Be Used as Adjectives and Not Nouns or Verbs.

Do you need an EIN to trademark?

Generally, businesses need a Federal Tax ID number or an Employer Identification Number (EIN) to legally conduct business. Whether a sole proprietor or a corporation, an EIN is necessary.

How do you get around trademark infringement?

Contact your legal team or go to attorneys who can handle infringements for you as soon as they are discovered. While the legal process may be time-consuming, legal penalties and sanctions can be one way to prevent scammers from further infringing on your trademark.

What is the fair use defense to trademark infringement?

In trademark law, the fair use defense provides that a defendant may use an otherwise protected mark not as a trademark but merely for its descriptive meaning. For example, the term “apple” is a registered trademark for computers. However, it is fair use for others to use that word commercially to describe the fruit.

How do you fight a trademark infringement?

You may file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner's mark, and/or that the trademark owner's mark is invalid.

What can a trademark lawyer do?

A trademark lawyer can help you protect your business’s intellectual property assets such as a symbol or logo. Many or all of the products featured here are from our partners who compensate us. This may influence which products we write about and where and how the product appears on a page.

How to protect your trademark?

The best way to protect your trademark is by registering it with the United States Patent and Trademark Office. While it’s possible to register a trademark on your own, most businesses that go through this process, especially those registering a trademark for the first time, are represented by a trademark attorney.

What is the part of trademark registration that could make or break your case?

Out of all parts of the trademark registration process, the part that could “make or break” your case is the trademark search. This is when the lawyer searches for other trademarks that could be found confusingly similar to yours. It’s a common reason that trademark applications are rejected.

How much does a trademark attorney charge?

Trademark attorneys can charge around $500 to $2,000 for the full trademark application process and an additional $400-$500 if any delays or disputes arise in your case. In addition to the fees charged by the trademark lawyer, you’ll have to pay several hundred dollars in government filing fees.

What do you do when you hire an attorney?

When you hire an attorney to work on your case, you also essentially hire the rest of their team. This includes law clerks, paralegals, legal secretaries, and business partners, all of whom may work on your case. Some attorneys delegate a significant chunk of work to clerks or paralegals, and this can cause errors on your trademark application. Ask what work will be delegated, whether the attorney independently reviews all work completed by paralegals and secretaries, and what the attorney will handle on their own.

What is the test for trademark eligibility?

The test for trademark eligibility is whether there’s a “likelihood of confusion” between your mark and another mark. If there’s a similar logo or mark being used by one of your competitors, the likelihood of confusion is high.

Can a trademark be complicated?

However, a trademark application can be particularly complicated and sets in motion several deadlines and requirements that you need to comply with to successfully register your trademark.

Lawyer-Client Relations: Socrates Was On to Something

Case in point: Your first meeting with a new client. There will never be a better or more important time to ask all sorts of questions. At this meeting, it should be your No. 1 priority to launch what you hope will be a long, productive relationship to achieve the best lawyer-client relations, by learning all you can upfront.

1. Why did you come to me?

In Colorado, where I live, 632 people just passed the 2014 state bar exam. That brings us to a total of 21,726 active lawyers here. And this is one of those big square empty states. Just imagine how many lawyers a client can choose from in other places.

3. What worries you most about this matter?

The answer to this will tell you so much about the person you are dealing with, as well as the dynamics you should expect. If the answer is something like “that your services will be too expensive,” or “that I don’t know what this is going to cost,” you’ve been put on notice to over-communicate about money.

4. Have you ever worked with a lawyer before?

If this is his first time, you will know to be gentle. More than that, you will know that you must guide this client through the experience, to serve as the host or narrator so it’s always clear what is going on.

5. How would you like me to communicate with you?

Depending on the focus of your practice, one-size-fits-all communication with your clients may not be a good idea. If you have any room at all for flexibility, it will improve the experience for clients and you if you can tailor how you communicate to meet the client’s needs and preferences. (Give it a good hard think.

What is a trademark lawyer?

A trademark lawyer will conduct a comprehensive search to include federal, state, and common law trademarks, often using professional software.

How much does a trademark lawyer cost?

A trademark lawyer costs around $1,000 to $2,000 for the general trademark process, but disputes could cost the client an additional $300 $400 an hour. Some of the trademark lawyer costs you may see include: Filing fees for the trademark application. Government costs charged by the USPTO. Flat-fee trademark lawyer costs.

What happens if a business is rejected by the USPTO?

If the USPTO rejects your trademark, the cost to fix the application and defend the trademark, or to reapply, could be more than if you had hired an attorney to file the application properly in the first place.

How long does it take to file a statement of use?

You file the Statement of Use about seven to nine months after filing the first application. The USPTO will tell an applicant when the Statement of Use is due. There is a fee to file the Statement of Use. The fee is $100 for each class of goods in the original application.

How much does it cost to register a trademark?

Overall, a trademark registration can cost over $2,500. However, these trademark lawyer costs are important. There is ample work that still needs to occur after a trademark application is filed. Before even filing a trademark application, it is important to conduct a thorough trademark search.

How much does an attorney charge to respond to an office action?

If an attorney helps to respond to the Office Action, the attorney might charge between $200 and $2,000 to prepare the response. The cost depends on the time and effort required to prepare the response. The USPTO does not charge any more fees when a business owner responds to an Office Action.

Who pays for trademarks?

First, a business owner pays fees to the U.S. Patent and Trademark Office (the "USPTO"). These fees are sometimes called "costs" or "official fees.". Second, a client might pay fees to a trademark attorney. This trademark attorney manages the process of registering a trademark.

What should a lawyer provide?

Every lawyer should provide a concise summary of the firm’s philosophy, mission, and track record. Explain how the firm operates, what type of cases are generally handled, and how the firm will likely handle this particular case. Additionally, attorneys meeting with new clients should briefly explain their experience, education, ...

Why is it important to be attentive during a new client consultation?

While most attorneys would consider this an intuitive part of their legal practice, being especially attentive during new client consultations is important, not only to show your attention to the case, but also your attention to the client’s needs and expectations (as exhibited by their behavior, attitude, questions, and answers).

Is it necessary to have a free consultation?

While this may not work for every firm – and it’s certainly not required – offering free consultations can be an effective way to shoe in more prospective clientele, particularly those who may be wary of taking on legal services or who may not be sure how to proceed with their cases (if at all).

How long does it take for a law firm to answer a question?

If the client asks the law firm a question, the law firm will answer within two business days. If the law firm has no questions about the application, the law firm will file it or give the client’s legal opinion within two business days of the client hiring the law firm.

When does a law firm owe an update?

If the law firm sends an update to the client on Thursday at 6:00PM, and the client sends a response at 8:00PM, then the law firm owes the client an update by two business days after Friday, meaning the law firm owes an update by Tuesday.

How much is the grace period for a law firm registration?

1. If client hires us less one month before client’s main renewal/maintenance deadline, the law firm may accidentally miss the initial deadline, resulting in the registration entering the final six-month grace period. When a registration is in the grace period for a six-year maintenance filing, an additional $150 filing fee per class must be charged, covering the $100 government penalty fee plus payment processing and labor. When a registration is in the grace period for a 10-year renewal, an initial $250 filing fee per class must be charged, covering the $200 government penalty fee plus payment processing and labor.

What is the New York State Bar Association's "Informational Statement"?

(Informational Statement Adopted by the New York State Bar Association)#N#1. The client is expected to treat the lawyer and the lawyer’s staff with courtesy and consideration.# N#2. The client’s relationship with the lawyer should be one of complete candor and the client should#N#apprise the lawyer of all facts or circumstances of the matter being handled by the lawyer even if the#N#client believes that those facts may be detrimental to the client’s cause or unflattering to the client.#N#3. The client must honor the fee arrangement as agreed to with the lawyer to the extent required by law.#N#4. All bills tendered to the client for services rendered pursuant to the agreed upon arrangement regarding#N#fees and expenses should be paid when due.#N#5. A client who discharges the attorney and terminates the attorney-client relationship must nevertheless#N#honor financial commitments under the agreed to arrangement regarding fees and expenses to the extent#N#required by law.#N#6. Although the client should expect that his or her letters, telephone calls, emails, faxes, and other#N#communications to the lawyer will be answered within a reasonable time, the client should recognize that#N#the lawyer has other clients who may be equally deserving of the lawyer’s time and attention.#N#7. The client should maintain contact with the lawyer, promptly notify the lawyer of any change in#N#telephone number, address, email, or other electronic contact information, and respond promptly to a#N#request by the lawyer for information and cooperation.#N#8. The client must realize that the lawyer is required to respect only legitimate objectives of the client and#N#that the lawyer will not advocate or propose positions that are unprofessional or contrary to law or the#N#New York Rules of Professional Conduct.#N#9. The lawyer may decline to accept a matter if the lawyer has previous personal or professional#N#commitments that will prohibit the lawyer from devoting adequate time to representing the client#N#competently and diligently.#N#10. A lawyer is under no obligation to accept a client if the lawyer determines that the cause of the client#N#is without merit, a conflict of interest would exist or a suitable working relationship with the client is not#N#likely.

How many letters can you send to Markhound Threaten?

MarkHound Threaten subscriptions include a limit of five letters in any given month, or six different letters in any given year. The law firm will only send letters that have at least some legal merit. The law firm will not send letters that it deems to be frivolous, gratuitous, or in bad taste.

Can a law firm represent a competitor?

The client acknowledges that the law firm may currently represent, may have represented in the past, or may represent in the future, a competitor of the client or even a party legally adverse to the client. The client consents to representation in the aforementioned situations.

Can a law firm increase its hourly rate?

However, the law firm will not increase its hourly rate to an unreasonable extent. 5. The client agrees that funds paid to the law firm in advance will be deposited to the law firm’s operating account and treated as the law firm’s own funds, as allowed under New York Bar ethics rules.

It's what you don't know about your clients that matters

Do you really know your customer? Are you asking the right questions to really understand them. Their hopes, their dreams, their disappointments, their ... well you get the idea.

Final word

If you get the answers to these questions you'll have a great foundation from which to develop a powerful account planning strategy that not only helps your clients, but helps you crush your revenue and retention goals.

How to get a good lawyer to take your case?

“If you want to improve your chances of securing the best lawyer to take your case, you need to prepare before you meet them,” advises attorney Stephen Babcock. “Get your story, facts, and proof together well before your first meeting.” This not only ensures that you understand your own needs, but it helps a good lawyer to ascertain whether he or she can actually help you. “We want the best clients too. Proving you’re organized and reliable helps us.”

Why is it important to approach a lawyer with honesty?

“ Winning cases can be lost because of a client who lies or exaggerates just as easily as because of a lawyer who tells the client what the client wants to hear instead of what is true.” So when dealing with attorneys, don’t just look for honesty—be honest.

Do you need a lawyer to write a demand letter?

On reading a demand letter, the other person will often say, “this isn’t worth the trouble” and they quickly settle. But here’s a secret from Knight: You don’t need a lawyer to write a demand letter. You can do it yourself. Just make it look as formal as possible, and you may find your dispute goes away—no charge to you.

Should a lawyer stay out of court?

In fact, a lawyer should try to stay out of court. “In my experience, a good lawyer always finds every opportunity to keep a case from being decided by a judge, and only relents on trying a case before the bench when all alternatives have been exhausted,” attorney, Jason Cruz says.