Questionnaire before filing a trademark
Quote from barbapappa on December 1, 2021, 10:20 amIs there something like a questionnaire that I could give client before meeting them in person?
Some really basic questions.
Is there something like a questionnaire that I could give client before meeting them in person?
Some really basic questions.
Quote from Martin Schweiger on December 1, 2021, 10:30 amthese are some questions that come to my mind:
- explain your business so that I can translate that into a "list of goods and services". That item has the single most important impact on the future costs of your trademark. And that makes the difference between a good and a mediocre trademark attorney.
- you need to decide where you want trademark protection. There are about 160 countries in this world with serious business activities but you cannot afford to file trademarks in all of them. You will probably need support for selecting those countries that will have the biggest impact on your business
- you need to decide whether you want lower costs when filing your trademark application and higher costs towards the registration of the trademark in the various countries, or vice versa. Higher costs when filing your trademark application and lower costs towards the registration of the trademark in the various countries, together with a higher degree of security about what you are doing.
The total costs will be the same, but there are some people out there who sell over a low initial price.
- you need to decide whether or not you want freedom-to-operate searches for earlier rights of third parties. Both (doing the searches and not doing the searches before filing) can become very costly and there is some risk-taking involved. You need advice for preparing that decision.
- you need to decide whether or not you want a prediction for whether or not your trademark is seen as distinctive in those countries that you are filing into. The impact of this decision can be very costly, too.
In short words: before you even make these decisions about your trademark you need to be sure that the person who guides you through that process is a qualified patent and trademark attorney with business experience.
These are the questions that I would ask the attorney before entrusting them with my trademarks:
- what kind of business experience do you have? How long have you worked in the private sector (not in a law firm, and not in the public sector)?
- are you a fully qualified patent and trademark attorney or a lawyer with a registration as a patent and trademark agent?
- how many trademark applications have you prosecuted in your lifetime?
- how many appeal proceedings against decisions of a patent and trademark office have you done in your lifetime? What percentage have you won?
- have you worked as a patent and trademark examiner? If yes, for how long?