Trademark Applications: Hiring an Experienced Trademark Attorney Increases Your Success Rate
By Leslie Vander Griend | Related Practice: Intellectual Property
The world of intellectual property is marked by its complexity and ever-evolving nature. In a recent article titled "A Tale of Four Decades: Lessons from USPTO Trademark Prosecution Data," authors Deborah R. Gerhardt andJon J. Lee delve into 40 years of trademark application data from the United States Patent and Trademark Office (USPTO). Their study provides an updated perspective on trademark registration and litigation, and sheds light on the variables that correlate with success in trademark prosecution.
Given the apparent ease of filing trademark applications online, and the significant number of trademark applications filed pro se—directly by a company or an individual—it is worth considering whether hiring legal counsel is more likely to result in a successful trademark registration.
The data clearly demonstrates that applications filed by legal counsel tend to have higher success rates. The study looked at both rates of publication (i.e. initial approval) and registration (i.e., issuance of a registration certificate). While pro se applications achieved a publication rate of 63%, applications handled by legal counsel achieved a publication rate of over 80%. This marks a 28% benefit. Similarly, in terms of registration rates, 46% of pro se applicants succeed in registering their marks, whereas the registration rate jumps to 60% for applications represented by counsel—a 31% benefit.
Rates of success increase yet again where trademark counsel has experience in the field. Specialized attorneys can aid clients in selecting distinctive marks, fine-tuning the use of marks on specimens, and negotiating disclaimers and descriptions to fully align with the Lanham Act and USPTO regulations. Such attorneys are also adept at navigating the application process and addressing refusals in Office Actions, which constitute the most common obstacles to registration.
Notably, a deeper analysis of the data indicates that attorneys with extensive trademark experience have even higher success rates than their less experienced counterparts. Attorneys with a small number of applications in the USPTO database show a modest improvement in rates of success, with publication rates at 67% and registration rates at 51%. But as attorney experience increases, so do their success rates. For attorneys who have handled 100 or more applications, the rates soar to 83% successfor publication and 62% success for registration. These success rates significantly surpass those of pro se applicants—by 20% and 16% respectively.
These findings suggest that companies seeking legal representation for trademark registration are likely to have better odds of success if they engage experienced counsel at the beginning of the process. The authors note that while the USPTO data has limitations in terms of attorney data, the impact of hiring experienced counsel is likely underestimated in these results.
The study also showed that although the group of highly experienced attorneys (those handling 100 or more applications) constitutes just 5% of all lawyers who filed trademark applications during the study period, they account for 79% of all applications filed by counsel. Clearly, trademark prosecution has evolved into a specialized field, where a relatively small percentage of experienced attorneys achieve the highest success rates.
The data also suggests the perception that "anyone" can file a trademark application does not reflect reality. This study underscores that trademark prosecution has become the domain of experts, with a small cohort of experienced attorneys yielding the best outcomes. Recent changes requiring foreign entities to have U.S. legal representation may also reflect the USPTO's recognition of the vital role trademark attorneys play in maintaining high quality on the Register.
Stokes Lawrence has several attorneys with over 100 trademark applications and decades of experience advising clients in trademark prosecution matters. If you would like to talk with us about handling your trademark portfolio, please reach out to one of our Intellectual Property attorneys.
