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How Do I Choose a Trademark Attorney? 10 Questions to Ask Before You Hire
The usual disclaimer, delivered with feeling: I'm an attorney, but reading this does not make me your attorney—no attorney-client relationship springs from reading this article. And yes, I'm a trademark lawyer writing about how to pick a trademark lawyer, which is why every question below is one you should ask me too. General information only, not legal advice. Have a real trademark issue? Talk directly with a lawyer about your specific situation.
Choosing a trademark attorney boils down to verifying three core facts:
Is a licensed attorney personally handling your legal file?
Does the quoted fee cover what you actually need to reach registration (clearance, government fees, and Office Action responses)?
Will the lawyer tell you the blunt truth if your proposed brand name faces severe registration hurdles?
The trademark market is filled with services that appear identical on a checkout screen but diverge dramatically after you pay. That difference rarely appears on a initial pricing page.
To help you vet providers, here are ten direct questions to ask. Print this list and run every firm you are considering through it—including us.
So here are the ten questions that surface it. Ask them out loud. How someone answers tells you more than any review score.
The 10 Vetting Questions
Is the USPTO filing fee included in your price?
The base USPTO government fee is $350 per class of goods or services. Because this fee is non-negotiable and mandatory, any quote excluding government fees isn't lower—it is simply an incomplete estimate. Always get an all-in total number.
Will a licensed attorney personally review my application before it's filed?
Phrases like "attorney-supervised" or "attorney access available" often mean non-lawyers handle the actual file preparation. Ask specifically whether a licensed lawyer will evaluate your proposed mark, review your goods classifications, and draft your descriptions.
Do you run a clearance search — and will you tell me if my mark is unlikely to register?
A "knockout search" only flags exact matches in federal databases. A proper clearance assessment evaluates likelihood of confusion, descriptiveness, and real-world infringement risks. Ask which type of search you are getting and what happens if a conflict turns up. If a provider's business model relies on filing applications regardless of risk, that incentive structure matters.
What happens if I get an office action, and what does it cost?
Most substantive refusals require formal legal arguments to overcome. Ask directly whether Office Action responses are included in your initial price, billed hourly, or referred out. Many budget filing packages terminate the moment official pushback occurs.
Who will I actually be talking to?
The person who handles your initial intake is frequently not the practitioner assigned to your file. Ask who is managing your matter day-to-day and how you can reach them when questions arise.
What is your bar license number, and where are you admitted?
A licensed attorney will answer this immediately. You can verify bar standing online through state bar directories in less than two minutes. Any hesitation or evasiveness here should end the conversation.
What is not included?
Ask for an explicit list of exclusions. Statements of Use for intent-to-use applications, extension requests, logo filings, and assignment records are common sources of unexpected second invoices if omitted from the initial scope.
How will you decide which classes to file in?
Proper class selection requires understanding your real business operations. Be cautious of automatic recommendations to file across numerous classes without cause; over-filing multiplies government fees without providing enforceable rights for products you do not actually offer, and creates evidentiary hurdles later.
What happens after registration?
Registered trademarks require mandatory maintenance filings between years five and six, as well as every ten years after registration. Ask whether the firm actively monitors these compliance deadlines or if post-registration maintenance is entirely up to you.
What could go wrong with my specific mark?
Ask for a clear risk assessment rather than a sales pitch. No reputable practitioner can guarantee registration, as final decisions rest entirely with USPTO examining attorneys. Anyone telling you an application is a guaranteed success is not evaluating your file carefully.
What Do the Answers Actually Tell You?
When evaluating responses, keep three patterns in mind:
Vagueness signals structural gaps. "Our team of trademark professionals" is not "a licensed attorney." "We handle everything" is not a list of inclusions. Precision costs nothing when the answer is good.
Guarantees are a red flag. Because USPTO examining attorneys exercise independent discretion, registration can never be guaranteed. Claims promising guaranteed approvals rely on fine print or unenforceable promises.
Willingness to advise against filing is high-value. A lawyer who advises you not to file a high-risk mark forfeits short-term filing revenue to protect you from wasted government fees and future rebrand costs. That candid advice is the primary value of hiring legal counsel.
Do I Need an Attorney in My State?
Federal trademark law is nationwide. Any U.S.-licensed attorney in good standing can represent you before the USPTO, regardless of where your business is located. A California attorney can handle filings for an Ohio corporation, and a New York attorney can represent a Texas startup.
State geography only becomes relevant if you require counsel on state-level trademark filings, local unfair competition claims, or state court litigation. For standard federal registrations through the USPTO, jurisdiction is federal.
Crucial rule for international applicants: If your business or domicile is located outside the United States, USPTO regulations strictly require you to be represented by a U.S.-licensed attorney.
What Should I Expect to Pay?
Pricing varies widely, and comparing sticker prices across providers is genuinely misleading unless you normalize for what's included. A useful way to compare:
Government fees: $350 per class minimum, plus surcharges for incomplete applications ($100 per class) or custom goods descriptions ($200 per class). Same for everyone — it's the USPTO's number, not the firm's.
The clearance work: the most valuable and most variable component. Ask whether it's a database check or a legal opinion.
The filing: preparation and submission.
The contingencies: office action responses, statements of use, extensions. Often excluded, often needed.
Focusing exclusively on the lowest initial checkout fee often leads to paying multiple à la carte fees later. Request an estimated total cost through registration, including potential Office Action defense, to compare real numbers.
At Markley, federal trademark matters are handled under clear flat-fee tiers. Every file is personally managed by a licensed California attorney, with an honest risk assessment provided before government fees are committed.
FAQ
How do I verify an attorney is licensed?
Search the state bar's public directory for the state where they're admitted. It's free, public, and takes under two minutes.
Is a bigger firm better for trademarks?
Not necessarily. Large firms bring depth for complex disputes and international portfolios; smaller practices often deliver faster, cheaper, and more directly on straightforward filings. Match the firm to the job.
Should I choose based on reviews?
Reviews reflect client service experience, which is valuable, but they don't replace legal competence. Use reviews alongside the ten vetting questions above.
Can I switch attorneys mid-application?
Yes. You can file a change of representation with the USPTO at any point during the process, including when hiring an attorney to respond to an Office Action on a previously self-filed mark.
What if I can't afford an attorney right now?
If budget constraints require filing independently, focus on registering your plain word mark, run the most thorough search you can manage, adhere strictly to the USPTO ID Manual to avoid surcharges, and consult an attorney immediately if you receive an official refusal.
Asking these ten questions gives you a clear framework for evaluating trademark counsel. If you are looking for flat-fee federal trademark filings handled directly by licensed California attorneys—with government fees included and straight answers on clearance before you file—contact Markley to review your brand.
