Do Trademark Lawyers Matter? A New Paper by Professors D. Gerhardt and McClanahan Says, Emphatically, Yes

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New research by two UNC School of Law professors, Deborah R. Gerhardt and Jon P. McClanahan, shows that, although the trademark registration process is fairly straightforward, when the going gets tough, the tough do best with a trademark lawyer.

“Our data supported that having a lawyer made a difference in every scenario we looked at,” says Gerhardt, an assistant professor of law.

Gerhardt and McClanahan, a clinical associate professor of law, reported their findings in “Do Trademark Lawyers Matter?” published in the Spring 2013 issue of Stanford Technology Law Review .

In business, your brand represents your reputation. Think about it: Every business, nonprofit, school or service provider has a trademark for the name of its organization and probably more marks for each service or product it offers. Registering your business name or logo as a trademark through the U.S. Patent and Trademark Office (USPTO) provides a great deterrent against others choosing the same brand. Registration also offers broad national protection, giving an owner the right to stop others from using your brand in ways that might confuse customers into thinking another’s product or service is your brand or capitalizing on the success of your brand to draw sales away from you.

“Businesses have to think defensively about brands,” Gerhardt said. “When budgets are tight, businesses question whether it’s worth hiring a lawyer for something they might be able to do themselves. Trademark registration is one place where it does make sense to hire an expert who really knows what he or she is doing.”

The USPTO, as a government agency that makes money, treats applicants like the paying customers they are. The agency has made it easier to file a trademark application online, and its website has a helpful section of answers to frequently asked questions that guide an inexperienced lay person through the application process. Once the application is filed, the USPTO assigns an examiner to the case. If the examiner finds a problem, an office action is issued and the registration process halts until the problem is solved.

“That’s when it matters hugely to have a trademark lawyer,” Gerhardt said.

Fully two-thirds of trademark applicants face an obstacle that results in an office action. It might be something as simple as a restaurant name that includes a common word, such as “brewery.” An inexperienced applicant might not make it clear that the application is not claiming exclusive right to use the word “brewery” and might not know to include a disclaimer that the trademark is for the use of “brewery” only in connection with the rest of the business name.

“In doing this research, I learned how common office actions are,” Gerhardt said. “Understanding how to respond to them is something we need to focus on in training young lawyers.”

Another obstacle comes after the trademark is approved. The USPTO publishes the new trademark in the Official Gazette. Anyone with a similar brand will have a set period of time after publication to petition that the application be canceled. Gerhardt and McClanahan found that trademark lawyers proved more effective than even relying on the expertise of an experienced layperson. Brand owners who hired an experienced lawyer had a 50 percent greater likelihood of success than inexperienced applicants applying on their own.

The USPTO has been collecting data on brand applications since 1884 and released a wealth of that data in 2012. To conduct their study, Gerhardt and McClanahan mined information from more than 5.8 million trademark applications filed since 1984, a year that marked the beginning of more complete information on each file. According to McClanahan, each record contained 1,500 possible data points.

“Literally hundreds of variables for millions of applications,” McClanahan says. “Prior to the release of that data, neither trademark attorneys nor applicants knew much about the landscape of trademark applications or the likelihood that a proposed mark would proceed to registration. It allows researchers to better understand and quantify how legal systems function. Before the availability of this data, such an understanding was anecdotal and intuitive at best.”

Gerhardt and McClanahan have gone back into the data to examine the success of lawyers in international trademark applications, and over the summer, they presented their findings to an international conference of law professors over the summer at the Intellectual Property Scholars Conference in New York.

“Because I train trademark lawyers, I wanted to know: Does it matter that I’m putting all these trademark lawyers out into the world?” Gerhardt said. “It was a gratifying project to see what a difference having a lawyer made.”

-September 5, 2013

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