Do Trademark Lawyers Matter?

  • July 7, 2013
  • Stan. Tech. L. Rev. 583
Deborah R. Gerhardt
Jon P. McClanahan

This Article empirically examines whether lawyers make a difference in prosecuting federal trademark applications and, if so, how much. Working from a wealth of data the USPTO released in 2012, we examine 5,489,586 federal trademark applications filed since 1984 to determine how much legal representation correlates with success rates in various stages of the trademark application process. First, we show how trademark publication and registration rates have changed over time. Against that background, we examine how these rates differ if the applicant had legal counsel. By illustrating these differences over time, we assess whether trademark registration has become more accessible to pro se applicants. Next, the Article identifies common reasons why trademark applications fail and how the presence of legal counsel affects registration outcomes. While attorneys may make a significant difference for some types of applications and under certain circumstances, the impact is not uniform. Accordingly, we uncover circumstances in which an attorney has the greatest impact. For example, trademark applications encounter barriers to registration in the form of office actions by examining attorneys or oppositions filed by third parties. We show how much the presence of counsel is associated with overcoming these obstacles. Finally, this Article examines whether experience with the trademark application process affects publication and registration rates. We categorize attorney and pro se applicant pools into three experience levels to measure whether experience affects outcomes as much as the presence of counsel. The two largest subpopulations are experienced lawyers and inexperienced pro se applicants. The Article concludes by comparing the publication and registration success rates of these two groups

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