Tuesday, 7 May 2013

Do you really matter?

The hardest message to
get across to a prospective
client ...?
No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route.  This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.

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