I am frequently disappointed with attorneys who hold themselves out as “trademark attorneys,” when, in reality, they have very little trademark experience.
If you are considering hiring a trademark attorney here are ways to see for yourself whether the attorney truly has trademark expertise:
1. Use TESS for Filing Trademark Applications
If you are considering hiring an attorney to file a trademark application for you, use TESS.
Step #1: Find the Trademark Office’s Trademark Electronic Search System (TESS) on the Internet and select “Word and/or Design Mark Search (Structured).”
Step #2: Enter the attorney’s name in the “Search Term” box.
Step #3: In the “Field” drop down menu, select “Attorney of Record” and click search.
A list will appear showing the applications in which the attorney is the Attorney of Record. If the attorney’s name is a common one (e.g., Thomas Smith), make sure you only count those applications filed by the actual attorney you are considering hiring, not another attorney with the same name.
2. Use PACER for Trademark Lawsuits
If you need to hire a trademark attorney for a lawsuit (also called a “trademark litigator”) you should ask the attorney for a list of trademark lawsuits he or she has handled. An attorney should readily produce a list for you. He or she can retrieve it from Public Access to Court Electronic Records (PACER). Non-lawyers can also conduct their own limited searches on PACER. Note that the federal courts code trademark lawsuits under the number “840” – so look for that code.
Hire a trademark attorney with real trademark experience, not just one who calls himself or herself one. The above tips can help you verify that the attorney has the real experience you need.
David M. Lilenfeld