Time to get our trade marks.
February 7, 2011 3:11 PM   Subscribe

Needing recommendations for a competent, reasonably affordable intellectual property attorney in the US.

Hey so, I own a small company in the US that provides online services to businesses, and have recently realized that I should probably trademark the names that my company has been using for a couple of these services.

I'm assuming that a US trademark or service mark doesn't have to be done through an attorney in my own state, so, if you've had good experiences doing trademarks with lawyer anywhere in the US, let me know ... thanks!
posted by dacoit to Law & Government (8 answers total)
I am an attorney, but I am not your attorney. This is not legal advice.

It may be helpful for you to say what you mean by "reasonably affordable." Is there an hourly rate range you had in mind? A total amount you wanted to spend on the work (perhaps on a per-trademark basis)? How important is the availability of a fixed fee arrangement? One person's "$300 per hour is reasonably affordable, I know attorneys that would charge $800" is another person's "$300 per hour? Are you insane?"

I'm assuming that a US trademark or service mark doesn't have to be done through an attorney in my own state, so, if you've had good experiences doing trademarks with lawyer anywhere in the US

As a side note, this is actually true of most transactional legal work (e.g. giving advice, drafting documents, filing paperwork). As long as the lawyer is licensed in the state where the work is actually done, they can work on just about anything (the major exception being filing for patents, which requires a separate certification process). So for example attorneys licensed in one state routinely file incorporation forms in other states. In certain circumstances, an attorney licensed in one state can also make court appearances in another state in which they are not licensed.

The practical upshot of all of this is that if you find that you have a good working relationship with an out-of-state attorney, they may be able to do a lot more for you than you might think.
posted by jedicus at 3:31 PM on February 7, 2011

I'm not a lawyer. While a lawyer can file your federal trademark applications, a local attorney can probably better advise you of your common law rights (including registration of state trademarks in some (all?) states) in your state for protecting intellectual property.
I used to work for the state agency in my state that handles state trademark applications and I never saw one that was filed by an out-of-state attorney. The state trademark didn't provide nearly the same scope of protections as a federal mark, but obviously served some purpose, as plenty of people applied for state trademarks.
posted by elpea at 4:24 PM on February 7, 2011

*that's not to say the state TM apps couldn't be filed by an out-of-state attorney, I just never saw one that was.
posted by elpea at 4:24 PM on February 7, 2011

This small firm in Virginia has done quite a bit of trademark work at reasonable hourly or fixed-fee rates. Disclaimer: I am friends with the workers and management there.
posted by exogenous at 4:32 PM on February 7, 2011

Attorneys in secondary markets (Denver, Minneapolis) usually charge lower rates than those in major markets (New York, Los Angeles, DC). I don't know any trademark attorneys, but this is a thought worth keeping in mind when you're trying to find one.
posted by J. Wilson at 5:37 PM on February 7, 2011

I am an intellectual property attorney, but I'm not your intellectual property attorney. I would recommend contacting your state bar association and seeking references, preferably someone in the IP section. Most state bar associations have sections for various categories of the law and they are usually populated by attorneys who specialize in those areas.

Other considerations: talk to several different attorneys. Ask how much they charge per hour and how many hours they anticipate your particular case taking. Ask if they charge a flat fee for registering a mark, including any possible push back from the examining attorneys. Check out their profiles on avvo.com or Martindale Hubbell. Also check with the bar's attorney discipline board to make sure they don't have anything nasty outstanding or on their record.

Finally, remember that most trademark work is pretty straightforward, so it shouldn't be a very high fee, unless you get into conflicts with other registered mark owners, etc.

Good luck!
posted by Leezie at 7:54 PM on February 7, 2011

This Firm
is headed by a very tech savvy and IP oriented attorney.
Jeff is quite personable and will tell you right away if he thinks his firm is right for you.
posted by mmf at 7:57 PM on February 7, 2011

Sorry, this firm: http://www.jeffreyneu.com
posted by mmf at 7:59 PM on February 7, 2011

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