Do Trademark Lawyers Matter? YES! Study Confirms

YEVRAS LAW GROUP  

A study, conducted by two law professors at the University of North Carolina School of Law, confirms that having an intellectual property attorney file your application for federal trademark registration with the USPTO, significantly increases your success rate in obtaining federal publication & registration.  In the study,  “Do Trademark Lawyers Matter?” published in the Standford Technology Law Review,  5,489,586 federal trademark applications filed since 1984 were examined “to determine how much legal representation correlates with success rates in various stages of the trademark application process.” 16 STAN. TECH. L. REV. 583 (2013)(Abstract).

The study shows that 82% of trade/service mark applications filed by attorneys were published as opposed to only 60% of pro se applications.  The publication of a mark (in the Official Gazette) is an important step to obtaining federal registration, since it means that any obstacles initially identified in office actions have been overcome and a USPTO examining attorney has approved the application.  “These data suggest that the presence of a lawyer made a meaningful difference, increasing publication rates by 22 percentage points. Trademark applicants were 37% more likely to succeed in this first stage of the process and obtain USPTO approval of their marks when represented by counsel.” Id. at 607.  The rate for registration is slightly lower in the study, mainly attributed to the Intent-to-Use option available for published applications, which delays registration and can sometimes lead to abandonment of the application as well as other factors such as failure by the applicant to provide proper evidence of the use of the mark in interstate commerce (one of the requirements to obtaining federal trade/service mark registration).

Also, the study notes that a certain percentage of the pro se applications examined were filed by in-house trademark professionals (i.e. paralegals) of large corporations, who typically are well versed in federal trademark laws, themselves, and have access to in-house or outside counsel for guidance.  Some of the pro se applicants, among the pool of pro se applications examined, were Victoria’s Secret, American Express, The Home Depot, and Nestle.

 Conclusion:

Trademark Attorneys significantly increase the likelihood of success of trademark applications.  “On average, 42% of trademark applications filed by pro se applicants ultimately succeeded in admission to the Principal Register. The average attorney success rate was 60%. Publication rates provide a better measure of the effects of counsel, because they exclude the large number of abandoned intent to use marks. Applications published 82% of the time if prosecuted by a lawyer, but only 60% of the time when the applicant was pro se.”  Id. at 622.

The full article written by Professors Gerhardt & McClanahan, as published in the Standford Technology Law Review, can be found here.