We are often asked by clients who have never filed for a trademark before what they should expect when they meet with an attorney for the first time. While “initial meetings” are different at every firm, here in our practice, the goal of an Initial Needs Assessment is to learn as much as we can about the business and the owner’s goals for the future.
It’s important to remember that filing for a trademark is not exactly a “one-size-fits-all” service. Many DIY or online programs make the process seem as simple as typing your information into a few boxes, paying a fee, and hitting submit. While there are cases when filing for a trademark is smooth, simple, and straightforward, we have had countless clients come to us after having filed on their own because an official rejection or other notice is received from the USPTO. Our job is to not only help avoid such issues, but to work with the business owner to develop a trademark strategy that accomplishes both his or her short and long-term goals (which is something that DIY robots cannot provide).
What that said, here are some questions we may ask during an initial meeting that will help to preemptively identify any potentially avoidable issues and guide us toward the best path forward for the particular client:
 

1. Have you ever done a search to see if someone else is using the trademark you want or something close to it? We’ve seen many cases where a client wants to trademark something that is confusingly similar to an existing trademark or they only made minor changes to differentiate their trademark from another (such as changing a letter or adding one small word). In a lot of these cases, the client will need to go back to the drawing board and start over because what they want to register is doomed from the start. Before starting any work, we use the initial meeting to identify such issues and give the business owner direction before they spend money on a trademark that will ultimately be denied or could result in future litigation. Most frustrating are cases in which a potential client has a brand that they have used for years and never ran a search, then when we run a search we see there is another with a registration that will cause issues.
2. Who will be the owner of the trademark? This seems like an obvious question, but it’s a little more nuanced than people might realize. For example, problems can arise if a person puts a trademark in his or her personal name rather than the name of the entity it represents. Or, maybe someone has an LLC that they want to use for the application, but they plan to open a new LLC for the business that the trademark will attach to. These are actually huge problems that could prove fatal for the success of a trademark both in the application phase and if there’s an infringement issue in the future.
3. What is the status of the business? There are different processes for obtaining trademark protection depending on the status of the business. If the business is still in the “concept” phase and there’s no real product or service in commerce, then the business owner may need to start with an Intent to Use (ITU) application, which is different than a general trademark application and carries different rules and requirements.
4. How do you foresee your business operating in the future? When you file for a trademark, you’ll need to select the specific class of goods or services that the mark will apply to. Often clients ask to file for trademarks that we believe are too narrow and miss out on protecting what may be a natural evolution of their business in the future. Rather than taking the chance that someone else could scoop up your trademark in a related area, it can be beneficial to stake your claim to logical classes of goods or services right from the start.

 
Finally, when meeting with an attorney for the first time, confirm that everything discussed is confidential and then don’t be afraid to openly share your desires, your ideas, even your fears, because all of that information that will help him or her develop a plan that more easily accomplishes your goals, protects your brand, and heeds off the possibility of expensive litigation in the future.
Ready to Get Help?
We are here to answer all of your questions without stress or pressure. If you’d like to schedule an appointment to discuss your trademark on intellectual property needs, please call our office at 888-666-0062.
 
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.