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GPSolo Magazine

GPSolo March/April 2024: Niche Areas of Law Practice

Trademark Law

Erica A Allen


  • The author stumbled into trademark law and built a fulfilling career and business she loves, helping small businesses and passionate entrepreneurs across the country.
  • Trademark law is built around well-established rules and systems that eliminate the need to reinvent the wheel as much as in other practice areas.
  • This practice area offers an undersaturated market and the ability to work virtually, allowing for a flexible schedule and opportunities for travel.
Trademark Law
MoMo Productions via Getty Images

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Becoming a lawyer wasn’t my lifelong dream, but like many others, I found myself deciding to go to law school for what I now see as “practical” reasons. Between my junior and senior years of college, I started to feel the pressure to decide what to do with my career. I was a communications major and had been exploring public relations, event planning, and broadcasting. I was leaning toward public relations but wasn’t particularly excited about it, and jobs in the market were scarce. That summer, I found myself in an internship using my communication, public relations, and writing skills to support a nonprofit dedicated to helping women recover from a life of addiction. The highlight of the internship was successfully advocating to a judge for a young woman to be sentenced to an addiction treatment program rather than more jail time. I left the courthouse feeling a sense of accomplishment and reward. I realized I used my communication skills in the courtroom to do something good, and I decided that day I wanted to go to law school. If I’m being honest, though, it wasn’t just the satisfaction from the internship; it was the idea of waiting out the job market and being “guaranteed” a high salary as a lawyer—or so I thought.

Fast-forward to graduation. The job market was . . . a little better, but the starting salaries were still shockingly low. Nonetheless, I carried on with my idea that I was going to become a family law attorney, helping people through their toughest times, all while utilizing the skills I excelled at. No shade to family lawyers, but the reality of practicing family law was nothing like I had envisioned. I couldn’t sleep at night, thinking about the families I was meant to be helping, the workload stacking up on my desk, the injustices I witnessed, and, of course, just worrying about keeping my job. I learned quickly that this wasn’t for me, and after starting my own civil litigation practice, I found that neither was litigation. Please don’t construe this as a knock on the legal profession—it’s simply not what I expected it to be and not what fulfilled me personally.

Out of desperation, I started exploring all kinds of options. I started applying for jobs outside of the law—marketing, operations, and even public relations again. I concluded that I no longer wanted to practice law. I would have been willing to give back my degree—for a refund—had that been an option! Thankfully, however, I explored other practice areas as well. Always having been interested in supporting (and owning) small businesses, I started learning some of the transactional sides of business law and quickly stumbled into the world of trademark law, which I view(ed) as the frequently missing piece for helping small businesses. I am happy to honestly say I love my law practice as a trademark lawyer and especially the firm I built.

All this to say, there are options for everyone in the wide world of law. I truly believe that. If I can find happiness as an attorney, you can, too! Below I will explain what really drew me to this practice area, why this is an important and rapidly growing area of law, some of the pros and cons of working in this field, and how you can incorporate it into your practice.

Trademark Law: What It Is and Why It Matters

Most of us were not taught much about intellectual property in law school. Most people, even business owners, are unaware of the important ramifications (and benefits) of trademark law. In case you fall into this majority, a trademark is essentially a source identifier for a business. It can be a name, logo, slogan, or even a scent, sound, or shape (these latter three are far less common). Think about the Nike swoosh or “Just Do It”; think about the smell of Play-Doh; or think about 1989 (Taylor’s Version) for all the Swifties out there. I use ultra-popular examples because they are the most universally recognizable, but trademarks are just as important for small businesses. Trademark registration is how those trademarks are protected and preserved for the exclusive use of the owner.

Almost every business has at least one trademark, even if it is not protected through federal trademark registration. That would be the business’s name. Now, not every business name is protectable, as it has to be capable of distinctiveness, but this isn’t meant to be a detailed trademark law lesson. To illustrate the importance, consider the following:

  • There are literally millions of small businesses in the United States (and more every day).
  • Most businesses have an online presence that expands beyond state lines (meaning they share a marketplace with the entire United States, which triggers federal trademark laws).
  • The number of federal trademark filings increased by 1,274 percent from 1981 to 2020.
  • Lack of knowledge is not a defense against trademark infringement.
  • Average damages for a trademark infringement lawsuit are in the hundreds of thousands of dollars.
  • Consumer confusion is bad for business.

I could go on for days . . . and I do in much of my content available online. The list above is meant purely to quickly illustrate the prevalence and importance of trademark law for small businesses.

Practicing Trademark Law

The more I researched the practical side, the more I realized that this area was aligned with my values and my life goals and had the potential to give me the kind of business I wanted. Here is what drew me in:

  • the ability to help people all across the country (minding your state bar rules);
  • the ability to do this work completely virtually, allowing for a flexible schedule and the opportunity for travel;
  • the opportunity to support small businesses and passionate entrepreneurs;
  • the undersaturated market at the time (due to growth in the area, it still is);
  • the creative aspect of the work; and
  • the presence of rules and systems that eliminate the need to reinvent the wheel as much as in other practice areas.

While it swiftly became apparent to me that there was a need for trademark legal support for small businesses, I had no idea exactly what that encompassed and how on Earth I could learn to adequately serve people in such a seemingly complex area. I started diving deep into the Internet to try to learn more. I stumbled on a few trademark lawyers, and I sent cold emails asking if I could pick their brains. That was a good starting point, and I was guided to the publicly available Trademark Manual of Examining Procedure (TMEP) to start some research. This was and still is enormously helpful but not so practical for getting started.

Eventually, I connected with Sonia Lakhany, a trademark attorney and the founder of 4L Education. At the time, she had just launched a course called 2 Weeks to Trademarks to teach other attorneys the practical and substantive sides of trademark law. I took her course, and eventually, she became my mentor and now friend.

After taking the course, and with the support of an experienced attorney, I found my first few clients and dove in. The more work I did in this area, the more I wanted to do! I realized this was the area that I loved and supported my vision for my firm. It took a while before I really felt confident in my skills and happy in my practice, but it was all worth it to me. I am able to quite literally travel the world and work from anywhere while supporting incredible business owners, entrepreneurs, and personal brands. I found that rewarding feeling I had been looking for all along—in a very different way than I had expected. Knowing I am setting up these businesses for success, getting them out of a major pickle, or helping them leverage their intellectual property (the most fun part) gives me a sense of fulfillment and lets me sleep soundly.

Downsides to Trademark Law

Everything I said above is true, and while I thoroughly enjoy what I do, there are some downsides to be aware of. The first is a combined pro and con: People are unaware that they need trademark legal guidance. It can be frustrating at times, especially with more stubborn clients. Despite efforts to inform and educate, some business owners will choose to dismiss trademark protection as one of those “it won’t happen to me” scenarios or claim “that’s only for big businesses.” It does get exhausting preaching the same thing repeatedly and getting willfully ignored. On the other hand, there are so many entrepreneurs left to educate and help.

Related to this frustration is the “competition” of online trademark filing companies and DIY culture perpetuated by the ill-informed. I put competition in quotations because comparing their service to what I can offer as a licensed attorney is not apples to apples. Unfortunately, some view it that way. This often results in businesses running into major problems (refusals) with their applications, not actually getting the benefit they’re looking for, and essentially throwing away money. There is no substitute for an attorney-conducted trademark search and analysis.

Next, dealing with the U.S. Patent and Trademark Office (USPTO) is not without its inefficiencies and frustrations. The bulk of the work is done on their online platform, which, aside from some recent updates, is highly outdated, clunky to use, and plagued by regularly occurring glitches. It’s the downside to relying on technology. Additionally, practitioners and trademark applicants are at the mercy of USPTO attorneys and support staff for decision-making, timelines, and addressing errors (including tech glitches). In 2018, the timeline to hear back from the USPTO after filing an application was about three months. Today, it averages about ten months. Keep in mind that this is just to hear back initially—not to get registration. The average time from application to registration, if all goes smoothly, is about 1.5 years.

How Can You Offer Trademark Law in Your Firm?

Despite the downsides mentioned above, if all this sounds appealing, you might be eagerly wondering how you can start offering trademark law in your firm. Here are two ways:

1. Learn Trademark Law

This isn’t necessarily easy, but it is totally doable and can be rewarding if you are committed.

As I mentioned above, I started with an online course called 2 Weeks to Trademarks (by Sonia Lakhany), which is still available today. Since then, it has been revamped and significantly improved, with instruction not only on the substantive aspects of practicing trademark law but also on how to market this practice area and find clients. Bonus: It is now approved by the American Bar Association for CLE credit. Sonia has taught numerous other courses for trademark attorneys that range from beginner to advanced levels, all under the umbrella of her 4L Education brand. She also built a community of thousands of trademark attorneys online in a free Facebook group called Trademark Attorneys/Lawyers, which I use regularly as a resource. I highly recommend Sonia’s content and courses as a starting point if you’re looking to learn this practice area and/or the business side of it.

Another option is to connect with other trademark attorneys and see if you can shadow them or get some mentorship. I will say that some foundational training is probably wise, even with the best mentor. Because it is such a niche practice area, many attorneys are willing to hire and train attorneys in their firms.

2. Collaborate with an Experienced Trademark Attorney

This is particularly beneficial for those who have complementary practice areas such as business law, real estate law, estate planning, tax law, or anyone routinely serving business owners.

After successfully serving hundreds of clients and creating efficient systems, my firm now offers collaborative “of counsel” services, providing trademark services on behalf of other firms while their clients stay their clients. We’ve seen great success with this. One thing to keep in mind is that a foundational understanding is necessary to spot issues appropriately and identify when clients need trademark guidance.

Alternatively, solos and small firms could consider bringing on an employee or law partner who is already experienced in this area.

Final Thoughts

Practicing law is not one-size-fits-all. Finding the right niche for you can be a challenge and sometimes require a lot of trial (pun intended) and error. I am truly grateful that I stumbled into trademark law and have built a fulfilling career and business that I love. I believe that the demand for legal professionals in this area will continue to grow, and there is certainly room for more of us solos and small firm lawyers to help the small businesses and passionate entrepreneurs out there. While it is not without effort, there are realistic ways to move into this niche, whether through your own training or through strategic partnerships. I sincerely hope my advice here helps readers find their path or increase their firm offerings and revenue.