According to an article by Deborah R. Gerhardt and Jon P. McClanahan published in the Stanford Technology Law Review, 16 Stan. Tech. L. Rev. 583 (2013), inexperienced trademark applicants who are represented by experienced trademark lawyers are fifty percent (50%) more likely to have their registrations issued than those who proceed pro se (without counsel).
The authors examined 5,489,586 federal trademark applications filed between 1984 and 2012. They looked at both publication and registration rates for applications where an attorney was named and compared them to the rates for applications where an attorney was not named. They also considered whether the attorney’s experience had an effect on the publication and registration rates.
They found that being represented by an experienced trademark lawyer improved the likelihood of publication by 46% over the rate for inexperienced pro se applicants. 16 Stan. Tech. L. Rev. 583, at 611.
The impact of being represented by experienced trademark counsel was highest when an application faced an obstacle: either an Office Action or an opposition proceeding. “Applicants with counsel had a success rate 60% higher…than pro se applicants in overcoming office actions and proceeding to publication.” Id., at 616. Applicants facing an opposition proceeding also significantly benefit from being represented by counsel. The registration rate for applicants represented by counsel in an opposition proceeding was 49%, as compared to only 34% for pro se applicants. Id., at 620. Here, in particular, experience matters. “Applications facing an opposition proceeding with an inexperienced lawyer had a 27% greater likelihood of maturing to registration than those defended by inexperienced pro se applicants.” Id., at 621-622. “With the presence of highly experienced counsel, the registration rate was 55% higher than it was for inexperienced pro se applicants.” Id., at 622.
As this article shows: it pays to have an experienced trademark lawyer. Grimes LLC attorneys have been filing and successfully prosecuting trademark applications for over thirty years.
The article can be found at: http://stlr.stanford.edu/pdf/dotrademarklawyersmatter.pdf.
