By Ben Langlotz
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April 16, 2015
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Firearms, How To, Intellectual Property Advice
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0 Comments
Cash for (Lawyer) Clunkers: How to Choose the Right Patent & Trademark Lawyer
A few months ago, I got a call from a Firearms Business owner I have gotten to know over the years. I met him more than a decade ago at my first SHOT show, and have stayed in touch since then. His surname is the company name (let’s call it “Bruno”), and he’s well known. Over the years, I’ve suggested that he really ought to protect some of his brand names now that his business was a growing and successful concern, but Mr. Bruno never wanted to invest in securing those patent and trademark assets.
Rewind to a year or so ago. Bruno gave me a call asking about trademarks. “OK, now you’ve got me!” he began, explaining that a recent issue of our newsletter hit home for him, and convinced him that it really was worth investing in his brand assets to secure them. He said he’d get back to me shortly to begin the process of protecting his valuable brands. But I didn’t hear back from him until a few months ago.
Bruno finally called again, this time asking how I could help him respond to trademark rejections. I figured he tried to file his own applications to save a few bucks, and was in a bind. Sometimes I wonder if the do-it-yourselfers are also performing surgery on themselves as needed, or performing their own dental work. Maybe this year at SHOT I’ll see whether my clients that entrust their critical assets to me have better (professional) haircuts, instead of do-it-yourself hack jobs. I’ll report back if we notice any patterns.
Anyway, it turned out that Bruno didn’t file the trademark applications himself. He hired a pal. The pal turned out to be an attorney, so Bruno wasn’t scammed by an imposter. However, based on what we learned about this attorney’s work, he qualifies as a “Clunker” in our eyes.
When a Certified Licensed Lawyer is a “Clunker”
It’s simple. When a lawyer dabbles in specialties where he has no training or experience, he’s likely to be a clunker. That’s what happened to Bruno. He hired a pal, who charged Bruno next to nothing, and turned out to be worth every penny.
As I reviewed the public files while Bruno was asking for our help, the first thing I did was to check out the lawyer. I searched the trademark database for all the trademarks the lawyer had ever filed. It turned out that he had filed only four. And he’d never succeeded in getting a registration. In fact, the two he filed for Bruno were the first he ever filed. He was using his friend Bruno’s valuable business assets as a guinea pig! (And charging him for it).
It probably seemed like a piece of cake to the lawyer. He probably had no trouble visiting the US Patent and Trademark Office website, reading the directions, and filing two trademark applications for Bruno. I hear it’s easy to wire a house, too: Just drill holes in the framing, string cable from the box to the switches, and screw on those little colored caps, right? What could possibly go wrong?
I’d like to point out that I file about 200 trademark applications per year, which means I not only know how to perform the deceptively easy filing process, but I also know how to handle the objections and rejections. Filing a trademark application without being prepared to handle rejections (as discussed in last month’s newsletter) is like carrying an unloaded pistol: You won’t have what it takes to do the job when the Spam hits the fan.
More importantly, I’ve learned in our decades of specialized trademark practice that it can be a dangerous mistake to blindly file a trademark application upon request, because there can be serious pitfalls that make the small investment required to get it done right pale in comparison.
As I reviewed the Clunker lawyer’s trademark filings, I didn’t see any glaring errors in the initial filings. But as I reviewed the rejection the first application faced, I saw that the lawyer had made a critical, potentially painful, and expensive error.
Like Carrying a Lightning Rod in a Thunderstorm
The Bruno trademark application was rejected because the Trademark Examiner ruled that there was a “likelihood of confusion” with another existing registration. What’s worse, the application was for the exact same trademark, and the owner of the existing registration was one of the most famous companies in our industry. So famous that even my gun-shy mother has heard of them!
This kind of big company knows their brand names are worth millions. The main brand may be worth tens or even hundreds of millions of dollars. And their team of lawyers scours the US Patent and Trademark Office database regularly to look for trouble. They’re looking for someone who tries to register a trademark that is similar to any of theirs. And when they spot it, they come down hard. In our office, we do this sort of search regularly on an industry-wide basis, just to see who’s filing what, and if any new trademark filings are objectionable to any of our own clients.
The funny thing about these big companies is they typically have blind spots a mile wide. Often, a little company will start using one of the big guy’s trademarks, or something similar, and the big guys will never notice it. Their lawyers don’t go out and Google their trademarks. They just search the US Patent and Trademark Office database of trademark applications.
That’s why I have to be so careful when I’m asked to secure a trademark by one of my clients. Especially when the trademark has already been in use, I want to be sure that there aren’t any conflicts out there before we file an application. Filing the application puts the trademark on everyone’s radar screen. If a small business quietly uses an infringing trademark without registering it, it may never be noticed or objected to. But if they file a trademark application, they’re hoisting a lightning rod for litigation, and are just begging the big guys to come after them with guns blazing, so to speak.
Of course, the smart thing in EVERY case is to have trademarks searched before they are in use. That helps ensure that there will be no need to try to hide infringing trademark use under the radar. Which would be silly anyway, because trademarks are supposed to be bold and widely recognized marketing assets to be promoted, not secrets to be hidden. Sometimes, I’ll be asked to secure an old trademark by one of my clients, and find bad news. I then advise that my client pick another brand that is safe to promote. They can make the transition on their own schedule, and not face a demand by a conflicting trademark owner to destroy their inventory.
The challenge for “Clunker” lawyers who don’t specialize in trademarks is that searching for conflicting marks is a lot more challenging than filing applications. A good trademark search is the backbone of our firm’s “Bulletproof®” trademark filing service, and is something that every capable trademark attorney should provide. Unfortunately for Bruno, his Clunker attorney pal just filed the mark, and obviously never did the critically essential search. Some months later, they received the rejection from the trademark examiner explaining that their proposed mark conflicted with the big guys’ rights. The big guys invested in registering their brand, and now they are enjoying ongoing perpetual “enforcement” of their rights. It’s pretty neat how they have a government agency policing their own property rights. It’s like the trademark examiner is serving as the police dog for the big guys, who didn’t need to lift a finger to enjoy the benefit of registering their trademark.
I should also note that while there can be effective arguments against rejections for many types of rejections, the “confusing similarity” rejection that Bruno’s application faced is a tough one when the trademarks and the goods they apply to are very similar, as they were in this case.
When he hired his unqualified pal, Bruno thought he was getting a sweet, low-cost deal from his friend. But in the end, he’ll end up with only one registered trademark, and he paid two filing fees, and two attorney fees for the filings. Not a bargain.
Worse yet, Bruno now gets to worry whether the big guys whose trademark he infringes will eventually notice his foolhardy attempt to register the infringing brand. Bruno might get a “cease and desist” letter any day, demanding he abandon his old brand, and destroy all his inventory marked with the infringing trademark.
Bruno will have to weigh whether to drop the brand he had hoped to secure, and ramp up a new brand from scratch, flushing away all the advertising investment he made in building the brand.
And the poor “Clunker” attorney faces real legal liability for failing to meet the most basic standard of care to look out for his client’s interests. It would be easy to make the case that the unqualified attorney’s failure to search caused the big guys to discover the infringement, making him liable for all the costs Bruno suffered in having to change brands and destroy inventory.
How to Detect a Closet Clunker
It’s easy to know your lawyer is a lawyer. Just call up the state bar organization, and they’ll confirm it. But how do you know if he’s really a qualified trademark lawyer? The starting point is to ask them how many trademark applications he’s filed in the past year. This will tell you whether he is an active practitioner in the specialty, who keeps up with the field. If you get resistance on this, or a too-vague guess, press on it. Ask to see a list of the attorney’s filings from the last year. Or a list of all the trademarks filed. This will take a minimally-qualified trademark specialist about five minutes online to check the records (and we’ll provide it at no charge to anyone who is unsure of their current or prospective attorney – and we’ll also include our statistics for comparison – just email us).
How much experience and trademark activity is enough? If they’re filing one trademark application a month, they’re not rank amateurs, but it may show a lack of experience in the specialty, which can be important when challenging cases arise. If they haven’t filed about 100 over their entire career, you’re paying for their on-the job training. If they’re filing over 50 per year, you’ve likely found a serious specialist. We file about 200 per year in our little office, to give you some perspective.
Of course, it’s possible to have a very capable attorney who doesn’t yet have much experience on the record. He may have been working for a law firm where he gained expertise that isn’t on the record, for instance (that’s how most of us did it). But if you don’t get good evidence that you are looking at an experienced specialist, keep looking.
Cash for Clunker (Lawyer) Program Details
If you should find yourself represented by a less than experienced trademark attorney (less than 100 trademarks filed, or less than 10 in the past year) you can now “trade him in” and get $1000 credit toward my legal services in filing new trademark applications, responding to rejections on old ones, renewing registered trademarks, filing documents to transfer responsibility to our firm, or any other legal services. Contact me for all the details, and I’ll tell you how I can help.
