The business landscape completely changed since the internet age began. Companies and brands that seemed invincible, such as Blockbuster and Toys ‘R Us, have been replaced by streaming services and online retailers. Some whole industries are completely gone (remember travel agencies?). Although lawyers and the law are notoriously slow to adapt to technological changes, some trademark attorneys are getting ahead of the curve and offering trademark prosecution services online to trademark owners.
As the public gets more comfortable ordering car services from their smartphones and having their meals shipped to them directly each week from online food retailers, they are also becoming more comfortable hiring and paying an attorney they never met to file their trademark application.
The future of trademark prosecution practice for small business clients and entrepreneurs is rapidly shifting to clients finding and hiring attorneys online rather than trying to find a local attorney who practices in the niche legal field of trademark law.
The Internet Changed How Trademark Owners Find Attorneys
Trademark attorneys who never practiced before the United States Patent and Trademark Office (USPTO) before it launched the Trademark Electronic Application System (TEAS) or the Trademark Electronic Search System (TESS) probably wonder how trademark attorneys filed trademark applications or conducted trademark searches. The internet completely changed how attorneys work, and is now changing how clients find and choose the lawyer they hire to file trademark applications.
The same way that the USPTO online filing and search systems have helped attorneys save time filing trademark applications, the internet has allowed trademark owners to save time finding a trademark attorney. Rather than asking business partners what trademark firm they use, creating a list, calling or visiting multiple law offices, trademark owners can look at five trademark law firm’s websites, find some reviews and make an informed decision after sending out a few inquiries to the trademark firms in less than an hour.
In addition, trademark owners can hire any attorney or firm to file their trademark application regardless if they live near them or on the other side of the country. Rural trademark owners benefit greatly from having experienced trademark attorneys they can hire without needing to travel to the nearest large city.
The internet gives trademark owners many more options to choose from when deciding what firm to hire. A trademark owner in Atlanta can hire a multi-national trademark firm in New York City or a solo practitioner with an office in New Hampshire with a few clicks and emails. Trademark owners may base their decision on whether a firm is offering to file their trademark application for a flat fee or for an hourly rate. The more options trademark owners have to hire, the better.
Lastly, the internet allows trademark owners to have access to their trademark attorney nearly 24/7. Trademark clients can contact their lawyer by email, phone, or if they have a personable attorney, even text message. In addition, they can connect “face-to-face” via technologies such as Skype or FaceTime that were only in science fiction movies as late as the early 2000s.
Online Trademark Firms Lower Overhead Save Clients money
Traditionally, trademark firms only survived in or around large metropolitan areas because that is where the most potential clients were located. The best intellectual property law firms have offices in New York City, San Francisco, London, etc… Having offices in the most expensive cities in the world is not cheap, and ultimately the clients have to pay for the the leases in skyscraper offices, and the city lifestyle employees in expensive cities demand.
In addition to having the options to hire attorneys in areas with lower overhead costs, it is easier for many trademark owners to price shop. Most trademark practices that advertise online use flat fee pricing rather than hourly rates, allowing consumers the ability to quickly compare prices between law firms. This not only saves trademark owners time, it forces trademark firms to be more transparent about their pricing and compete with their online competitors’ prices.
Many law firms finding clients in the online space are also often smaller operations with less partners, senior attorneys, associates etc… giving them a lot more flexibility to work with clients for a price that small business owners can pay. In the past, many small business owners were priced out of hiring experienced trademark attorneys because they could not risk investing in a trademark application based on hourly rates that were too high and the large firms cannot afford to lower their prices for a small client who will only file one trademark application ever.
Cautionary Tales of Trademark Mills and Trademark Application Filing Entities
Many trademark firms focused online provide competent legal advice for their clients the same way traditional law firms do when it comes to preparing, filing, and following USPTO trademark applications through registration. However, there has been a rise in a few online trademark firms that have demonstrated poor decisions on ethical issues and suspect business practices. Some of these firms rely on processing such a high quantity of trademark applications for low costs, they are more like “trademark mills” than trademark firms.
The first giveaway of an online trademark mill is that the flat fee price is so low it is hard to understand how they can provide adequate time doing the necessary prep work before filing a trademark application and still make money. If the price is too good to be true, it probably is and the client may be left disappointed in the services they receive.
It is also important for trademark owners to know what they are actually paying for. Many of the big online trademark mills offer tiered application services. For example, a “Bronze Package” is only the filing of the trademark application, no follow-up or actual prep work. The “Silver Package” may include a USPTO knockout search before filing a trademark application. And the “Gold Package” might include conducting a trademark search, preparing and filing the trademark application, and responding to procedural Office Actions. Even though some trademark owners might think they are getting a deal, failing to do something as basic as a USPTO knockout search, can cost the trademark owner a lot more down the road and lead to other complications.
One of the most successful trademark mills, The Trademark Company, recently discontinued their trademark application service after a years long investigation into its founder, attorney Matthew Swyers. Among other allegations, it was alleged Mr. Swyers submitted “multiple fraudulent or digitally manipulated specimens of use were filed with the Office [USPTO], which potentially jeopardized the trademark applications of his clients.” Many of Mr. Swyers clients now may be worried their trademark applications were obtained fraudulently and they will be cancelled if challenged. As a result of Mr. Swyers alleged misconduct, he is no longer allowed to practice law before the USPTO.
The lesson to learn from the moral failings of The Trademark Company are that client specific services are still important. The Trademark Company filed many trademarks but did not focus on the important things for their clients such as explaining the whole process, ensuring the specimens were authentic, and more. Attorneys have a high duty to their clients to be competent and diligent, and some of the trademark mills do not live up to this standard.
In addition, there are issues with companies who claim they do not “provide legal advice” but also take money from trademark owners to help them file trademark applications. The most well-known example of this is LegalZoom, who hire “trademark document specialists” who assist trademark owners filing trademark applications for a fee.
The “trademark document specialists” are not lawyers, and therefore should not be giving legal advice. However, a Plaintiff that filed a recent lawsuit against LegalZoom alleges the Plaintiff used LegalZoom to file two trademark applications and the trademark document specialists “provided legal advice to the plaintiffs by selecting classification and modifying the goods and services description from the template thereby applying specific law to facts.”
LegalZoom is no stranger to being accused of the unauthorized practice of law having faced issues in Missouri, Arkansas, and North Carolina. In each of the previous cases, LegalZoom was able to continue with their business model. Will this time be different? Time will tell.
For many trademark owners, the shift to finding and hiring an attorney online is a natural progression of ordering anything else online. Like in other fields, the internet gives the opportunity for trademark firms to advertise their services across the country, with relatively low overhead costs and the savings made operating the business are ultimately passed on to the client. The trend of trademark owner hiring online law firms, especially small business owners, is increasing and there is no end in sight.