Do Trademark Lawyers Matter?

By Peter E. Morgan, Esq.

This is not an existential question, but the title of a new research study by Deborah Gerhardt and Jon McClanahan, soon to be published in the Stanford Technology Law Review, 2013.

It is no secret that non-lawyers can file federal trademark applications, just as individuals can incorporate companies and perform any number of legal tasks for themselves.  The question is, is it really smart for them to do so?  Lawyers are often asked, if the online, self-help sites file all the documents you need for a whole range of legal services, all at what seem like reasonable prices, what do you gain by hiring a lawyer to do these things for you?

Gerhardt and McClanahan provide empirical evidence that may help to make the decision simpler.  On average, they discovered, only 42% of trademark applications filed by pro se (i.e., "do-it-yourself") applicants were ultimately successful in registering.  When they looked at marks that got at least as far as the publication stage of the application process, 62% of non-lawyer applications made it that far, while 82% of lawyer applications were published.

The study also showed a substantial difference between applications filed by inexperienced trademark attorneys (for example, a solo practitioner who files just a few trademarks a year) and those attorneys who make trademark and intellectual property work a substantial part of their practice.  Applications filed by experienced trademark attorneys, the study found, were more than 50% more likely to register successfully than those applications submitted by pro se applicants.

And even that is not the whole story.  Let’s not forget that not all pro se applicants are alike—in fact, this group includes all the large companies that file marks for themselves using in-house counsel rather than hiring a trademark lawyer from outside the firm.  For example, the top so-called pro se applicants include American Greetings, Twentieth Century Fox, Hasbro, Avon, American Express, Nestle, Hershey, Victoria’s Secret, XEROX, McDonalds, and others.  If you take these applicants out of the mix (since they are really not true do-it yourselfers), the average entrepreneur who files his or her own trademark has a far better chance of having his or her mark rejected than ever seeing it register.

Since US federal trademark applications, even those that pass through the system without a hitch, take approximately nine months to complete, the marketing and lost opportunity costs of an unsuccessful application can make the actual application fees look like a drop in the ocean.  The question then becomes not can you afford to have an attorney prosecute your trademark application… but can you afford not to?