In 2013, Stanford Technology Law Review published a study done by UNC School of Law faculty members Deborah R. Gerhardt and Jon P. McClanahan that seeks to answer “DO TRADEMARK LAWYERS MATTER?” (online .PDF available). The study assesses the value lawyers provide regarding trademark prosecution matters, including oppositions during the publication phase of a trademark application.
The data the authors reviewed for the study became available after Google and the USPTO partnered up to make patent and trademark data freely available to download on the Google servers. The authors reviewed trademark prosecution data from 1984 – 2010 because a) data before 1984 is incomplete and b) applications filed after 2010 may not be fully played out yet.
In their introduction, the study’s authors hypothesized that the combination of both a law degree and experience will lead to the highest success for applications to mature to registrations.
The authors looked at data at two points in the application process, pre-publication and post-publication. As a quick refresher, applications are initially examined at the United States Patent and Trademark Office (USPTO), and if approved by the Examining Attorney, they become “published.” Third parties have 30 days to oppose a published application if they feel registration of the application would harm them. The substantive examination process happens pre-publication. Published use-based applications, according to the study, proceed to register 99% and 98% of the time when filed by lawyers and pro se applicants respectively. Only when a third party opposes, do applicants face an additional burden to meet registration, which will be discussed further below.
The key take-away from the study is 82% of applications filed by attorneys from 1984 – 2010 proceeded to publication whereas 60% of pro se applicants’ marks achieved publication. The authors state these numbers are a bit skewed due to large corporations, such as Hershey’s and McDonalds, filing applications without an attorney of record, but likely are either filed by a company attorney; or paralegal with trademark experience and access to a team of attorneys.
An interesting point the study revealed is that applications drafted by lawyers receive an office action 64% of the time and the lawyer is successful in overcoming an office action in 73% of the cases. Conversely, examiners issued pro se applicants office actions 73% of the time and only 45% of those applications overcame the refusal.
In addition, lawyers also provided significant value when third parties opposed applications after publication. Nearly 50% of represented applicants overcame a third party opposition contrasted with 34% of pro se applicants succeeding in defeating an opposition.
The study illustrated the value attorneys can provide applicants, but also demonstrated the significance experience plays in the application process. For example, while the overall publication success rate for lawyers is 82%, for lawyers who filed less than 30 applications, the number drops to 74% and the rate drops to 68% for those who filed less than 10 applications.
So what does this all mean? A lawyer is not required for a trademark application to mature into a registration, but they significantly increase the likelihood of success. Have any comments? Feel free to leave them below or to contact us.