How to hire an expert: IP Lawyers and the Trademark process​

So you need this thing done, and it needs to be done right. It could be marketing, programming, art, business stuff, a website, or whatever. You could do it yourself, but it’s nontrivial and you don’t have six months to develop your skillz enough to make it good, or in some cases you need it done right the first time. You need an expert.

For this post I’ll use the example of a trademark lawyer. I’ll explain the trademark process later on, but in short you could theoretically save a ton of money by registering it yourself. There is no license requirement or union stopping you, but for the love of video games please don’t do that to yourself!

What is a trademark:

A trademark is a BRAND. It is not copyright or a patent. It is used like a fancy signature so that consumers know who made a product. Coke is a trademark, the formula is not (trade secret). IBM is a trademark, the thousands of inventions it has developed are not (patents). Wizards of the Coast is a trademark, the D&D rulebooks are not (copyright). Taco Cabana (the name) is a trademark, the look and feel of the stores are a different kind of trademark called trade dress (supreme court case), but only the purely decorative (i.e. non-functional) elements.

OK here’s a complex one: Magic the Gathering (the name of the game), is a registered trademark. The _font used_ is trademarkable, but isn’t to my knowledge (please don’t try to use their font). The font file (i.e. the 1/0s you would need to use the font) is copyrighted. The rule booklets that come with a box of cards is copyrighted, but not the game mechanics. There are a few specific rules that are patented, but overall the game mechanics are unprotectable.

I’ll repeat that: by and large game rules themselves are not protectable, but in the few cases where you can, that is a patent. This is true for games of all genres and platforms (video, tabletop, etc).

Should you patent your game rules? Almost certainly not. It is not effective protection in the gaming industry, and will cost you $10-20k. There are better ways to protect your IP, but talk to your lawyer about that.

So how do I get one?

First, don’t register a trademark yourself. Seriously, if you want one, you should talk to a lawyer. Not that you _can’t_ do it yourself, but you are much more likely to be wasting your money if you do that. As with all things law, you have no idea how strong your legal protection is until you have to defend yourself. No amount of self delusion will help you. I’ll go into more depth on the process itself later.

So if I need a lawyer, how do I find one?

Don’t just google a lawyer and go with the first one you find. You need to find out if they are good, or you’ll just be wasting your money. Just like all other professions, there are good lawyers and bad lawyers. The 10x performance rule applies to all creative/mental industries, and lawyers are no exception.

How to hire an expert the hard way:

Step 1. Fail at it yourself (if at all possible): This trial run will teach you some very important things: the most important of which is what not to do. Seriously, if it’s nontrivial you’re going to f*** it up the first time, even if you don’t know you did. Be prepared for that. If you can’t afford to be wrong on the first try, then get as far as you can without going beyond the point of no return. In this case: draft a trademark application yourself, but don’t submit it.

Step 2. Compare to people better than you: You’re not a snowflake. You’re not better than everyone else at everything. Compare your trial run to others more successful than yourself. See what they did better than you. See what you did better than them. You now have a flimsy grasp of what is good and what is bad, however tenuous. In this case look at other trademark applications on TESS (see below).

Step 3. Metrics: Now that you’ve had a smattering of experience, ask yourself this: “How would I know if the expert is good or not? What can I measure?” This is perhaps the hardest step, and you might have to repeat steps 1 and 2. You will probably be overconfident on this. Not ideal, but unavoidable. You should also ask _demonstratably __successful_ people who have hired similar experts and ask them what made their expert good or bad. Absolutely do not just go with a vendor that your friend gave a thumbs up to without knowing why they recommend them. Your circumstances may be subtly and crucially different.

In terms of trademarks, metrics include (and what they theoretically measure): percent of failed applications (general ability to predict what the trademark examiner might object to, as well as quality of due diligence research), how many office actions it takes before approval (how well the lawyer is able to argue against a trademark examiner’s objections), how many accepted applications (experience).

Keep in mind some trademarks are MUCH trickier than others. A trademark lawyer should be adept at helping their client get what they want, but also at pointing out likely pitfalls and avoiding impossible applications. Note that your lawyer should not be telling you what a “reasonable” person would or would not object to. You should expect trademark examiners to border on being “unreasonable,” but they aren’t looking to shoot you down for “no reason.”

Step 4. Search: Find some professionals! This may sound trivial, but it’s surprisingly not. Imagine yourself in the shoes of an expert; someone who really knows their stuff, but crucially, isn’t the best marketeer. That last bit is important. You want to pay someone to be an expert in their field, not at marketing (unless you’re looking for a marketing expert). Pop quiz: 1. Which Steve should you hire as a programmer: Wozniak or Jobs? 2. Which Steve is more famous for making software (to non-programmers)? The correct answer to 1 is Wozniak, and the answer to 2 is obviously Jobs. See my point? In the case of a trademark lawyer, there is a place where every single expert is listed: the USPTO database. We’ll get to that later.

Step 5. (Re)search: Now that you’ve found some “experts”, go back to your metrics. How good are they? How do you know? This is different for every field, and unfortunately usually very difficult to actually find. When it comes to trademark lawyers though, you’re in luck! Everything they’ve ever submitted to the USTPO is in the public record. It even has a (woefully ancient, but suprisingly powerful) search capability built in! I’ll explain this in more detail later.

Step 6. Interview: Call up your expert. See if you mesh well as business partners. For example, do they actually pick up their phone and respond to email promptly? Do they know anything about your industry? Trademark defense (and law in general) ultimately will go to a judge and/or jury who likely has no idea about your industry, so you want a lawyer who knows how to translate industry jargon into legal jargon, as well as something a jury might understand. Trials are a whole different legal specialty, but know that the exact wording of your trademark application will come up in court if it gets to that.

Step 7. Pay them: ON TIME! Or sooner! This is really important. Your experts do what they do because they love it. What they don’t love is harassing you for a check. If you manage to find a real expert, you will want to use them again. If you make it effortless for them to get paid, they will make it worth your while. You’re going to pay them anyway right? Do it in a way that gets you brownie points.

Ok, back to trademarks. Hopefully your trademark lawyer (you did hire one right?) will explain the process to you, but here’s a sneak peak:

1. Fees: Easiest first. The government will take some money for the privilege of submitting an application. The current fee schedule can be found here, but in summary $275 for a US Trademark. Not quite as cheap as the $35 for copyright registration, but really not bad. Hold up though, it will likely cost several times that for lawyer fees. Budget well north of $1k minimum, and remember that you get what you pay for.

2. Classes: Trademarks are separated into different classes. Video Games are one class, boardgames are another. There are lots of other categories. If you’re like me and do both video and card games, you’ll have to pay fees for each category. Most people only dev in one category, so you’ll only have to pay the fee once. You can file a single trademark in multiple classes, but it doesn’t save you any money (or time), and you actually run the risk of getting the entire application rejected if one of the categories hits a snag. Just file a seperate trademark in each category.

3. Time: This process takes waaaaay longer than you’d expect. I’ll take one of mine as an example:

Beforehand: Gather all your paperwork and give it to your lawyer. They will spend some time researching and writing the application, looking for any potential issues. This is time well spent so don’t rush them!

T-0 : Application submitted. Yay!

First Review: +3 months. The USPTO will not even look at your application for at least three months. Just sit back and try not to think about it. This is totally normal.

Office Action +3 Weeks (each): For each correction or amendment, it will take 2-3 weeks for the USTPO to get back to you. This might not be needed, or it could be back and forth a couple times. Plan on 2 months for this just to be sure.

Published for Opposition: So you finally got this thing approved by the USPTO. But wait, there’s more! Your trademark needs to be published in the Official Gazette (USPTO journal) so others can have some time to object to your trademark, just in case the USPTO missed something (it happens). Your trademark will go out with the next publication, no more than a month or two (depending on timing).

Waiting for Opposition: 30 days for someone to either raise an objection or apply to extend the objection window to 90 days. That’s right. Up to three more months of sitting there trying not to think about it. Once publication is closed, the USPTO has up to 120 days to issue the registration, but I haven’t seen them take that long when I looked, and you probably don’t need to worry about it at that point.

Expected time (if everything goes smoothly): 8-9 months. Geez. You can expect it to take more than a year if it doesn’t go smoothly.

Here’s an example of one of mine: Duadikos Trademark

What happens if things don’t go smoothly? Suppose the USPTO rejects it, in spite of careful research? Well that sucks. I’m not a lawyer, so go talk with yours. You did hire a lawyer right? OK, well this is bad, and you want to avoid this happening. You ultimately depend on how your USPTO examiner is feeling that day. Unfortunately, you can’t track them down and make sure they have a good night’s sleep and their love life is doing well. You should work with your lawyer BEFORE you submit the application to really make sure there are no problems. For an example of when things went south, check out my first failed trademark attempt.

Baker Street Heists Trademark

Despite what you might think, it’s not the end of the world. Frankly, if your trademark application is denied, it’s a sign that you didn’t do a good enough job on SEO anyway. Resubmit with something better like I did:

Moriarty’s Machinations Trademark

In hindsight I think it’s a much better name, so it’s all for the best.

Ok, so that’s all well and good, but I’m lazy. The hard way is too hard!

OK here are my reviews of the IP lawyers I’ve used:

For the trademarks for my published game I went with reddit’s very own Ryan Morrison (not actually associated with reddit, but a very active user). He is super responsive and a real joy to work with. I think he did a very decent job on my trademark applications (there were a quite a few of them). If you look at TESS, you’ll see that my applications were among the first few applications that he did, at least listed as himself. He has since brought that number up to almost 70, and has a good track record of application approval. He does weekly legal AMA’s on /r/gamedev, and is super supportive of indie developers.

I had another unnamed IP legal need, and for that I went with Shannon Sadowski from New Leaf Legal. She (and her company) specializes in creative and startup companies, including games. I really like being able to meet with people I hire face to face, and NLL is based in Cambridge, near where I lived at the time. She is a dream to work with, and experienced. NLL just celebrated its 5 year anniversary late last year, and she has personally authored over 120 trademark applications over that period (and has a stellar track record on them). The thing that really sets Shannon apart though is how thorough she is. She went above and beyond any reasonable expectations on due diligence. I doubt you will find better than her anywhere near your price range. She also has a great network of other specialists she knows for a quick question or two. She works with startups a lot, and knows that legal fees are the last thing an aspiring business wants to spend money on. NLL’s strategy is repeat business, so she won’t make you take out a mortgage, and she is very upfront and honest about how much a service will likely cost.

For my LLC formation documents, I went with Boston Micro Law. While they were very responsive, and what I wanted wasn’t exactly standard, I don’t think I’d go with them again. I’ve moved to San Francisco anyway.