This study examined the impact of hiring an experienced trademark attorney on the likelihood of receiving trademark approval from the US Patent and Trademark Office. It found that applicants who hire experienced attorneys have an 82% chance of approval, compared to 60% for those who file without an attorney. The chances of approval also increase significantly based on the experience level of the attorney or applicant. Experienced attorneys successfully obtained approval 83% of the time, compared to 68% for less experienced attorneys.

1. When it comes to trademark applications, lawyers matter - study http://newsandinsight.thomsonreuters.com/Legal/News/2013/04_-_April...
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By Erin Geiger Smith
CAREER TRACKER:
(Reuters) - Trademark applicants who hire experienced counsel have a much greater chance of having their mark Lawyers on the move -
April 12, 2013
approved by the U.S. Patent and Trademark Office than less experienced filers who don't hire an attorney, a new
study shows.
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The chances of trademark approval also rises significantly when a filer is more experienced with the application
system, according to the forthcoming paper, "Do Trademark Lawyers Matter?"
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The draft paper is expected to be published in the summer edition of the Stanford Technology Law Review.
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The purpose of the review, conducted by University of North Carolina School of Law Assistant Professor Deborah severance to outgoing
AMR chief
Gerhardt and Professor Jon McClanahan, was to measure the impact of attorneys on the trademark process by
comparing applications filed by lawyers to those filed without the assistance of counsel. Judge in U.S. credit-card
fees case assails critics'
Eighty-two percent of applicants who hire counsel have their trademarks published in the federal register, compared
website
with 60 percent of pro se applicants, or applicants without counsel, the study said. N.Y. jury awards
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In looking at whether the experience level of the applicant or attorney makes a difference in terms of successfully William Koch in wine
fraud
getting a trademark, the study found it absolutely does.
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The study measured experience by number of filings an applicant or attorney has made. The category for the least to resume paying pension
fund, but not
experienced filers or attorneys included those with 10 or fewer applications; the most experienced group had filed bondholders
30 or more applications. U.S. accounting class-
action lawsuits down in
Applicants largely fell into two categories. There were nearly 900,000 pro se applicants in the category with the 2012 - report
least experience, representing 85 percent of all pro se applicants, the study said. More than 3.2 million applicants Factbox: An insider's
had attorneys who fell within the group with the most experience, representing 88 percent of all applicants with guide to U.S. antitrust
plea deals
attorneys.
The group least likely to have their trademark reach publication were the pro se applicants with the least
experience, who achieved publication 57 percent of the time, the study said, whereas pro se applicants with 30 or
more filings saw their trademark published 81 percent of the time.
Attorneys with fewer than 10 filings under their belt had their client's trademark approved 68 percent of the time,
whereas the most experienced attorneys were successful 83 percent of the time, the study said.
The fact that experienced pro se applicants are published nearly as much as experienced applicants with lawyers
comes with a caveat, Gerhardt said.
'A DRAMATIC DIFFERENCE'
The top 20 experienced pro se applicants aren't individuals but corporations, including American Greetings Corp,
Xerox Corp, Hershey Chocolate & Confectionary Corp and McDonald's Corp.
The recognizable Hershey's trademark of capital letters outlined in rectangles that appears on the packaging of the
companies chocolate bars, for example, was filed by a corporate employee and not a lawyer, the study said.
(Though the first Hershey's chocolate bar was sold around 1900, the trademark was published in 2009.)
While applications (like that one) may not list the name of an attorney, filers within those corporations likely had
access to legal resources and counsel, Gerhardt said, adding that the overall estimates of experienced applicants
with attorneys could therefore be low.
The analysis looks both at success rates for trademark publication and trademark registration. Publication occurs
when the trademark office publishes the mark in the federal register, representing the office's approval that it
believes there is no reason why the mark shouldn't be granted. Registration is when it becomes a trademark.
1 of 2 4/12/2013 1:36 PM

2. When it comes to trademark applications, lawyers matter - study http://newsandinsight.thomsonreuters.com/Legal/News/2013/04_-_April...
The publication data, study co-author Gerhardt told Reuters, provides more accurate insight because brand owners
often decide not to use marks between publication and registration, and withdraw them before the registration date.
They aren't, therefore, failed applications.
The study includes analysis of trademark applications filed from 1984 to 2010. The patent office data was made
available for free online for the first time when the office entered into a partnership with Google Inc in June 2010.
The authors chose 1984 as the start date because applications before then had incomplete information about the
presence of counsel, the study said.
The takeaway from the study, Gerhardt said, is that trademark law "is an area where lawyers can make a dramatic
difference, especially to those inexperienced with making trademark applications."
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Comments (1)
4/11/2013 9:22:20 AM by eganders
As an experienced trademark attorney, one who has filed around 1000 trademarks, I am please to see firms like
mine www.bviplaw.com starting to get the recognition they deserve in this era of cheap filing houses. While
companies such as LegalZoom may be perfectly capable of filing for a new corporation, when a new client
commissions a search for conflicting marks, they can't hope to read through the results and come to the kind of
confident and guiding conclusion a trademark attorney can. I tell my clients, paying the extra money to hire an
attorney and to have that attorney conduct a conflict search is some of the best money they can spend when
starting a new brand. It allows for a business or entrepreneur to proceed with their brand development with what I
like to call "brand certainty", as the trademark registration process can take a year or sometimes longer, new
brands cannot simply sit dormant, and attorneys are usually the only resource qualified enough to give a company
the confidence to move forward with the expenditure of significant capital to do those things necessary to develop
and promote a brand in those months before the registration of the mark is confirmed and finalized by the USPTO. If
anyone has any questions or would like to speak on this topic further, we offer free consultations to new and existing
clients to discuss the process and law surrounding the filing and use of a new trademark. evan@bviplaw.com or
(310) 425-3428
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