Start here
The Zest

Your Trademark Attorney Doesn't Have to Be Near You. Here's What to Check Instead.

Written by

For a federal trademark, "near me" matters less than you'd think. Registration happens at the USPTO, a federal agency, and its rules let a lawyer who is an active member in good standing of the bar of any US state represent you there. Your attorney doesn't need to be licensed in your state or have an office in your city.

What's worth checking is whether the person is really a licensed attorney, whether trademark work is something they do regularly, and exactly what you'd be paying for. All three can be checked, and two of them from public records.

Why location isn't the test

A federal registration creates rights throughout the United States and its territories. The application is filed online with the USPTO, and nothing in the process happens at a local courthouse or county office.

The USPTO's rules define an attorney as an active member in good standing of the bar of the highest court of any state, and "state" includes DC and US territories. Attorneys who fit that definition may represent others before the USPTO in trademark matters. The rule doesn't ask where the client is.

That's why a business in Ohio can work with a trademark lawyer in Florida, and the other way around. I practice from St. Pete and the work looks the same whether a client is across the bay or across the country.

Local can still be a reasonable preference. You may want to meet in person. Your matter may also involve things that aren't federal trademark practice: a state trademark registration, a state-law contract dispute, or a lawsuit in a particular court. Those can turn on where a lawyer is licensed, so ask about it if your situation goes beyond a USPTO filing. I compared the state and federal systems in the article on Florida's trademark register.

Check the license first

The first thing to confirm is that you're dealing with a US-licensed attorney at all. The USPTO warns that many filing companies aren't affiliated with licensed US attorneys, and it suggests asking for the attorney's bar number and verifying it with the state bar.

That check is usually quick. State bars generally publish a searchable directory of their lawyers. The Florida Bar's directory, for example, lets you search by name or bar number and filter for lawyers who are eligible to practice. Look for two things: that the person appears, and that they're currently in good standing. You can also ask the bar how to look up public discipline.

Attorneys also have to give the USPTO their own bar information when they appear in a trademark matter: the state where they're an active member in good standing, their admission date, and their bar number if the state issues one. A real attorney will have no trouble telling you where they're licensed.

Look at the filing history

Trademark filings are public records. The USPTO says so directly, and it notes that people use those records to identify the owner of a trademark and the owner's attorneys and representatives. That means you can see what a lawyer has actually filed.

There are two places to look. The USPTO's trademark search system has a field for attorney of record, so a search on a lawyer's name pulls up applications and registrations where that lawyer is listed. Then each record has a file in the USPTO's status and document system, called TSDR, where you can check the status and open the documents that were filed.

Here's what the history can tell you. Whether the lawyer files trademark applications regularly or rarely. Whether the filings are in industries like yours. And if you open a few files, what the lawyer's work looks like when the USPTO pushes back, because the office actions and the responses are in the file.

Here's what it can't tell you. A long list isn't proof of quality. Name searches miss things: common names return other people, and at many firms the applications go in under one attorney's name while someone else does the work. Refusals in a lawyer's history don't mean much on their own either, since some applications are filed knowing the risk because the client chose to try. Clearance opinions, advice not to file, and negotiated settlements never show up in the database.

The USPTO also publishes its orders against filers who break its rules, including sanctions and account suspensions. If you're considering a filing company or a firm you've never heard of, it's reasonable to look for its name there. The article on trademark scams covers the common schemes.

What to ask before you hire

Records only go so far. A short conversation fills in the rest. These are the questions I'd ask if I were the one hiring.

  • Who will actually do the work, and who will I talk to? The USPTO's guidance says the attorney should work with you directly, by phone and email.
  • Is a search included, and will I get an opinion on the results or only a list? Why Most Refused Trademark Applications Never Stood a Chance explains why that difference matters.
  • What does the fee cover, and are USPTO fees included or separate?
  • What happens, and what does it cost, if the USPTO issues an office action?
  • Have you handled matters at the Trademark Trial and Appeal Board? The USPTO suggests confirming experience with both applications and TTAB proceedings.
  • Who signs the application? It should be you or the attorney. Nobody else is allowed to.
  • Who keeps track of deadlines after filing, and after registration?

Pay attention to how the answers come. Clear, specific answers in plain words are a good sign. So is a lawyer who tells you something you didn't want to hear about your name.

Signals to weigh carefully

A few things should slow you down. None of them is proof of a problem, but each deserves a follow-up question.

A guarantee that your mark will register. Nobody controls the examining attorney, and nobody can promise an outcome.

A claim to be approved by, partnered with or endorsed by the USPTO. The USPTO says it doesn't work with or endorse private filing firms, and it can't recommend an attorney.

Pressure to pay right now or lose your rights. Real deadlines exist in trademark law, and you can verify them in your own USPTO file.

No attorney you can identify by name. If you can't find out who the lawyer is and where they're licensed, you can't do any of the checks above.

A request for your USPTO.gov password. The USPTO tells applicants not to share it. Attorneys have their own accounts.

If you'd like to run these same questions past me, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

Start here