A crop of law firms specializing in trademark filings has popped up in the Washington area during the past few years, and they’ve quickly become important players in the field.
Fueled by easier access to the Internet and a low-cost, flat-rate model, these niche firms — some of them solo practitioners — are tapping into a demographic of small-business owners and ordinary citizens who might otherwise not be able to afford the services of a large firm.
In 2010, trademark boutiques accounted for two of the top 10 firms with the most trademark filings — leapfrogging some of the largest firms in the country in the number of filings, according to a recent report from the Corporation Service Co., a legal and financial services organization. But those two firms ranked first and third on the list.
In first place came Raj Abhyanker P.C., based in Mountain View, Calif. The Trademark Co., with offices in Cary, N.C., and Vienna, Va., was ranked No. 3 by total number of filings — up from No. 87 the year before. Greenberg Traurig was second on the Corporation Service list, knocked down from first the year before.
Despite the boom in filings, these smaller firms say they aren’t focused on competing with the large firms. Not yet, anyway.
“The idea is not necessarily to take business away from big law firms, but to make legal services accessible to individuals that are just getting started,” said Josh Gerben, founder of Gerben Law Firm, the No. 11 firm on the list.
For $820, Gerben, a solo practitioner in Washington, will conduct a trademark search, draft and file the application and track the trademark. That includes the $325 U.S. Patent and Trademark Office filing fee. Gerben’s business model relies upon an online submission form and a flat-rate fee system to attract clients. He made 659 filings in 2010.
During the past decade, trademark filings peaked in 2007 with more than 304,000, but activity took a hit during the recession. There were 20,000 more filings in 2010 than in 2009, bringing last year’s total to a little more than 279,000. Both niche and large firms attributed the growth to an expanding client base.
“I’m not sure we have an overlap in the consumer base,” said Matthew Swyers, founder of The Trademark Co., a small firm like Gerben’s that specializes in trademarks. “Rather, we’ve expanded a product line to consumers who have been overlooked.”
Swyers, who operates out of Vienna, Va., made 1,138 trademark filings in 2010. In 2009, Swyers, who personally signs every filing, filed 268 marks. He attributes the firm’s rapid growth to its streamlined proprietary software, which allows it to handle a large quantity of filings. Trademark registration packages range between $149 and $449.
“The theory was to provide the exact same level of services that a law firm provides, yet at a small fraction of the cost,” Swyers said. “Name one industry which rewards client loyalty by upping their rates every year.”
Large-firm lawyers like Ann Ford, partner and chairwoman of the trademark, copyright and media practice at DLA Piper, said her firm’s services are geared for “sophisticated” clients willing to pay more. “We are looking to make sure the brand is working for the client,” Ford said. “If a client is coming to us and wants to cut corners or really doesn’t want to commit the resources, we may say that we’re not the right firm for you. For a sophisticated consumer, you get what you pay for.”
Despite its size, Ford said, the firm can deliver high-end service on a relatively tight budget with fixed fees. Ford said that the firm doesn’t take a cookie-cutter approach when bidding trademark filing jobs. A straightforward filing can cost about $900, she said, which includes the Patent and Trademark Office fee. More complicated filings that require extensive research can cost as much as $3,000.
“We have had clients hiring us after having been burned by cutting corners on what appears to be a simple form, or by failing to do a comprehensive search of their brand, thinking that the filing itself protects them,” Ford said.
In the pursuit of a streamlined and low-cost system, some niche firms do not have numerous partners with years of experience.
“One thing I see when you compare a Venable to the high-volume, low-cost services is that we have a deep bench,” said Justin Pierce, a partner in Venable’s Washington office.
According to the U.S. Patent and Trademark Office database, Venable’s clients include Yale University and power company Pepco Holdings Inc. “Our clients range from one person with one trademark to very large corporations with worldwide portfolios,” said Mark Harrison, chairman of Venable’s trademark, copyrights and domain names practice group.
Matthew Huisman can be contacted at firstname.lastname@example.org.