Trademark Administration

Trademark attorneys, like many other attorneys, have to deal with a variety of administrative and repetitive tasks in the course of their substantive legal work.  Though a trademark attorney should have the final say on substantive trademark issues, there are many supporting positions that help busy trademark attorneys manage their trademark dockets and practices. Below are some of the roles that help manage a trademark practice and trademark docket.

Trademark Docket Clerk or Docket Coordinator

Because there are many important deadlines for trademark attorneys to manage, and because missing even a single deadline could cost an attorney hundreds or thousands of dollars, accurate docketing is critical. Docketing clerks generally help track deadlines, log extensions, and organize data to ensure that filings are up-to-date. Trademark clerks generally do not need extensive trademark or even legal backgrounds, but they must have strong organizational and time-management skills. Full-time docketing clerks are most commonly retained by law firms or companies that have significant trademark portfolios. The median salary for a docket clerk is approximately $36,000 per year.

Trademark secretary

A trademark secretary often acts as both an administrative assistant and a trademark manager. This person is generally tasked with managing the plethora of documents that trademarks require: applications, forms, responses, and the like. This role is often filled by those new to trademark and/or legal work. Trademark secretaries frequently interact directly with clients, so good verbal and written communication skills are crucial for this task. Trademark secretaries sometimes help manage trademark dockets and deadlines, especially when aided by technology such as trademark docketing software. The median salary for a trademark secretary is approximately $43,000 per year.

Trademark Paralegal or Legal Assistant

Valuable assets in any law practice, paralegals are especially critical in trademark practice. Working alongside attorneys, paralegals not only interact with clients and manage trademark deadlines, but they also often assist with other aspects of trademark law. Paralegals frequently research existing trademarks, find relevant case law, and prepare for trial proceedings. Though they cannot represent clients in court, trademark paralegals often perform most other functions a trademark attorney might be required to do. Like other trademark paraprofessionals, paralegals often help attorneys manage their trademark deadlines so that filings do not lapse. The median salary for a trademark paralegal is approximately $47,000 per year.

Docketing software

Docketing software can often dramatically reduce the personnel costs associated with trademark support. Basic software often calendars deadlines, send reminders, and keeps documents organized. Alt Legal’s software also automatically detects filings, adds them to the attorney’s docket, keeps files organized and accessible by firm staff and (if attorneys agree) clients, and provides simple tools to complete trademark applications effortlessly. Using sophisticated trademark software is helpful for both trademark administrators and attorneys. Software makes filing and managing IP portfolios simpler and less risky for administrators. It also allows many attorneys to reduce administrator training costs (for example, they can sometimes use a docket clerk instead of a paralegal), reduces administrator turnover by reducing administrators’ stress levels, and increases accuracy and efficiency. Effective software can reduce key filing errors and make trademark filings more efficient for newcomers and seasoned veterans alike. Starting at just $75/month, Alt Legal’s software is an indispensable tool for any trademark practice.

Of course as with any legal transaction, it’s important that only licensed attorneys engage in the practice of law.


Alt Legal Featured on TechnoLawyer

Alt Legal's intellectual property management software was recently featured on the TechnoLawyer Blog. The article provides an overview of Alt Legal's software, discusses some key features, and includes the following quotation from Bill Samuels, an Alt Legal customer: "The platform automatically identifies and updates my docket without manual data entry. To replace Alt Legal, I would need multiple employees to manage my clients' trademark portfolios."

With several articles published each week, the blog explores legal changes, explains legal challenges and precedent, and reviews companies and products. Their diverse publication boasts that they publish "All the legal technology and practice management news that's fit to blog."

We're proud to have our software reviewed in the publication. Go here to schedule a demo, or visit altlegal.com/try-altlegal to sign up for a free trial of our IP management software.

10 #LegalValentines Tweets We Can Heartly Resist

Whether you were celebrating Single Awareness Day or waist-deep in flowers and chocolate, these 10 #LegalValentines Tweets will bring a smile to your face.

10) @EvanSheres offers a friendly reminder to register your trademark.

9) @jjmitchell, those are fighting words. 

8) @meehlelaw entertains us with this little ditty. 

7) Hope you find those red roses @wainwright_tom.

6) We love this feud between @theflabar & @lawprofblawg

5) Actually, @lawprofblawg was killing it all day.

4) @@theflabar was killing it, too; we aren’t taking sides.

3)  @ManagingIP threatens litigation in poetic fashion.

2) @PhilipMcCabe's tweet won #LegalValentines with 225 retweets and 367 likes (and counting).

1) Topping our list is the @JohnPhillips Notorious RBG tweet; it stole our hearts.



Podcast Catchup: IP Fridays

One of our favorite podcasts at Alt Legal is IP Fridays. The podcast is hosted by co-hosts Rolf Claessen and Ken Suzan. The episodes provide a succinct, focused, and, most importantly, interesting look at some of the most relevant topics in intellectual property. In the wintery weather, we are staying in and revisiting some of our favorite episodes including Episode #8 featuring Ed Timberlake, Episode #24 with Paul Banwatt, Episode #57 with John Welch, and Episode #63 with Ron Coleman, who is now working on the Slants case before the Supreme Court. 

Another standout episode is Episode #70. In the episode, they discuss at length an infographic published by the National Law Review in an investigation of better legal marketing practices. The infographic presents data about usage on different social media platforms, social media platform ROI, best times and days to post on different platforms, and more. 

Rolf also discusses his own YouTube Channel, which he uses to educate intellectual property owners, business leaders, and potential clients about intellectual property. He says the channel has brought in a lot of business for him and his firm.Attorneys at solo and boutique practices who are currently using or considering using social media as a marketing tool will likely find the episode and the NLR infographic quite useful. 

We have also had the privilege of having our own CEO, Nehal Madhani, on an episode, which you can check out here. And, of course, anyone who practices IP law should subscribe to IP Fridays; it's released every other Friday and we highly recommend giving it a listen.

Alt Legal CEO profiled on The Gen Why Lawyer

The Gen Why Lawyer, a podcast dedicated to Generation Y legal practice, recently profiled Alt Legal's founder and CEO, Nehal Madhani.

In the episode, host Nicole Abboud and Nehal discuss Nehal's decision to start a tech company, how he taught himself computer programming, and his transition out of Kirkland & Ellis, an Am Law 100 firm. 

They also discuss Nehal's marketing strategies for Alt Legal's intellectual property management software as well as Alt Legal's work culture and staffing choices. Finally, Nehal explains Alt Legal's customer-centric policies and how we focus on simplifying legal practice.


USPTO Fee Increases and Rule Changes for 2017

Effective January 14th, the USPTO enacted a number of changes, including increases in trademark and TTAB fees and procedural changes for trademark services.

The most substantial fee increases are for the initial application fee for paper filings, which increased by $225 per filing per class. The initial application for registration filed using TEAS also increased by $75 to $400. All the fee changes were increases except for those for electronic extensions, which decreased from $150 to $125.

 Other increases include the processing fee for applications that fail to meet the requirements for TEAS Plus or TEAS RF. Common reasons for not meeting the requirements include:

(1) Not providing all necessary documents electronically;
(2) Not providing a translation statement;
(3) Failing to maintain a current email address; and
(4) Not providing a color claim and description.

The fees for these failures increased from $50 to $125 per class.

It is important to note that fees are not tied to the filing date, so the new fees will apply to classes added or deficiencies corrected on existing trademarks.

In addition to the fee increases, the USPTO will implement other changes as well. The foreign registration number character limit has been increased to 19. The TEAS form will now also offer enhanced error messaging to alert filers of missing information.

TEAS signature forms have also been updated. They will require users to sign their full names between slashes. Example: /Nehal Madhani/ as opposed to Nehal/Madhani/ or other variants.

The forms for Applications for registration, Allegations of use, and Post-registration affidavits or declarations of continued use or excusable non-use have also been reformatted to be easier to understand. For example, on the declaration section of the application form, the filer will need to check boxes next to each statement, as illustrated below

The TEASi international application system has also been updated to include Brunei Darussalam.

The USPTO encourages filers with questions to email TEAS@uspto.gov.

Find the fee changes in the table below:

Description

Old Fee

New Fee

Increase

Filing a paper Application

$375/class

$600/class

$225

Paper Request to Divide an Application Filed

$100/new application

$200/new application

$100

Additional Processing Fee under §2.22(c) or §2.23(c)(paper)

$50/class

$125/class

$75

Additional fee for Filing a paper Renewal Application During the Grace Period

$100/class

$200/class

$100

Correcting a Deficiency in a Renewal Application via paper filing

$100

$200

$100

Filing a paper Affidavit under §8 of the Act

$100/class

$225/class

$125

Additional fee for Filing a paper §8 Affidavit During the Grace Period

$100/class

$200/class

$100

Correcting a Deficiency in a §8 Affidavit via paper filing

$100

$200

$100

Filing on paper an Affidavit under §15 of the Act

$200/class

$300/class

$100

Filing on paper to Publish a Mark under §12(c) on

$100/class

$200/class

$100

Issuing New Certificate of Registration upon Request of Registrant, Request filed on paper

$100

$200

$100

Certificate of Correction of Registrant's Error, Request filed on paper

$100

$200

$100

Filing on paper a Disclaimer to a Registration

$100

$200

$100

Filing on paper an Amendment to a Registration

$100

$200

$100

Filing on paper an Amendment to Allege Use under §1(c) of the Act

$100/class

$200/class

$100

Filing on paper a Statement of Use under §1(d)(1) of the Act

$100/class

$200/class

$100

Filing on paper a Request under §1(d)(2) of the Act for a Six-Month Extension of Time for Filing a Statement of Use under §1(d)(1) of the Act

$150/class

$225/class

$75

Certifying an International Application Based on a Single Application or Registration, filed on paper

$100/class

$200/class

$100

Certifying an International Application Based on More Than One Basic Application or Registration, filed on paper

$150/class

$250/class

$100

Transmitting a Request to Record an Assignment or Restriction, or Release of a Restriction, under §7.23 or §7.24, filed on paper

$100

$200

$100

Filing on paper a Notice of Replacement under §7.28

$100/class

$200/class

$100

Filing on paper an Affidavit under §71 of the Act

$100/class

$225/class

$125

Surcharge for Filing on paper an Affidavit under §71 of the Act During Grace Period

$100/class

$200/class

$100

Transmitting a Subsequent Designation under §7.21, filed on paper

$100

$200

$100

Correcting a Deficiency in a §71 Affidavit, filed on paper

$100

$200

$100

Filing on paper a Petition to Cancel

$300/class

$500/class

$200

Filing on paper a Notice of Opposition

$300/class

$500/class

$200

Ex Parte Appeal to the Trademark Trial and Appeal Board, filed on paper

$100/class

$300/class

$200

Filing on paper a Request for an Extension of Time to File a Notice of Opposition under §2.102(c)(1)(ii) or (c)(2)

 

$200/

application

n/a

Filing on paper a Request for an Extension of Time to File a Notice of Opposition under §2.102(c)(3)

 

$300/

application

n/a

Petitions to the Director, filed on paper

$100

$200

$100

Filing an electronic Application through TEAS Regular

$325/class

$400/class

$75

Additional Processing Fee under §2.22(c) or §2.23(c) (electronic)

$50/class

$125/class

$75

Filing an electronic Affidavit under §8 of the Act through TEAS

$100/class

$125/class

$25

Filing an electronic Affidavit under §71 of the Act through TEAS

$100/class

$125/class

$25

Filing an electronic Request under §1(d)(2) of the Act for a Six-Month Extension of Time for Filing a Statement of Use under §1(d)(1) of the Act through TEAS

$150/class

$125/class

-$25

Filing an electronic Petition to Cancel through ESTTA

$300/class

$400/class

$100

Filing an electronic Notice of Opposition through ESTTA

$300/class

$400/class

$100

Electronic Ex Parte Appeal to the Trademark Trial and Appeal Board Filed through ESTTA

$100/class

$200/class

$100

Filing an electronic Request for an Extension of Time to File a Notice of Opposition under §2.102(c)(1)(ii) or (c)(2) through ESTTA

n/a

$100/

application

n/a

Filing an electronic Request for an Extension of Time to File a Notice of Opposition under §2.102(c)(3) through ESTTA

n/a

$200/ application

n/a


Source: https://www.uspto.gov/trademark/fees-payment-information/trademark-fee-changes

Alt Trademarks: Episode 8 - Radiance Harris

Alt Legal presents the newest episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah talks with Radiance Harris of Radiance IP Law. Radiance talks about starting her own practice and about developing a flat-fee pay structure. Because she considers herself an introvert, Radiance offers tips and tricks for other introverts in the legal field. Hannah and Radiance also discuss the rise and some potential pitfalls of hashtag trademark applications. Some examples can be found here and here

For additional examples of hashtag trademarks and information about the cases discussed in the episode, check out Radiance’s article on hashtag trademarks here: www.americanbar.org

If you would like to contact Radiance, she can be reached online at radianceiplaw.com, on Linkedin.com/in/radianceharris, or by email at rharris@radianceiplaw.com.



Alt Trademarks: Episode 7 - Amanda Conley and Shabnam Malek

Alt Legal presents the newest episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah talks with Amanda Conley and Shabnam Malek of Brand & Branch in California. Amanda and Shabnam discuss their intellectual property practice that specializes on cannabis companies. They talk about opening a practice and some obstacles facing cannabis businesses seeking IP protection. They also discuss the impact that changes in cannabis law may have on the related IP. You can listen to this episode below or on iTunes or Google Play.

If you would like to contact Amanda and Shabnam, they can be reached online at brandandbranch.com, on LinkedIn at Linkedin.com/in/imperfectsonnet and Linkedin.com/in/shabnam-malek-342b3b7 or by email at trademarks@brandandbranch.com.

Alt Legal Wins Techshow Competition

Alt Legal is one of twelve companies named in the American Bar Association's Techshow Startup Alley competition.

Because of their selection, Alt Legal will be exhibiting at the ABA Techshow. They'll also participate in a bracketed pitch competition.

Nehal Madhani, Alt Legal's founder and CEO, is proud of the company's inclusion. "We're pleased and honored to be included among such fantastic companies. We're excited for the conference!" Madhani says.

Judges for the competition included Robert Ambrogi and Evolve Law cofounders Mary Juetten and Jules Miller. 

The Startup Alley competition was created by Techshow, Above the Law, Evolve Law and Law Sites Blog.

Alt Legal CEO Featured on IP Fridays

IP Fridays, a leading intellectual property law podcast, recently interviewed Alt Legal founder and CEO Nehal Madhani. In the podcast, Nehal sits down with IP Fridays cofounder and cohost Ken Suzan to talk about IP docketing management.

In the interview, Nehal discusses his transition from a lawyer at large law firm Kirkland and Ellis to being an entrepreneur. Nehal explains some of the steps he took to become a software developer and the CEO of a legal tech company.

Nehal also describes some of the processes Alt Legal uses to extract accurate and meaningful data from government sources. Having this data allows Alt Legal to fully automate its trademark docketing software. Patents are next, Nehal says.

Alt Legal's goal is to automate IP lawyers' most tedious work, so Nehal and Ken discuss which national and international government IP offices make that task easiest. Nehal describes New Zealand's recent and fantastic strides in that arena. Making an appeal to IP offices, Nehal describes the benefits of APIs both for attorneys and for the offices themselves.

When asked which technologies he'd recommend to IP lawyers, Nehal suggested not only cloud-based docketing software (like Alt Legal's) but also case-management software (particularly Clio, MyCase and Rocket Matter) as well as Customer Relationship Management (CRM) software that they can use to manage their client relationships.

IP Fridays fans should also check out Alt Trademarks, Alt Legal's own trademark-focused podcast.