Trademark Alert: Questions Every Business Should Ask Before Hiring a Trademark Attorney
- Jewish Dispatch
- 1 day ago
- 3 min read
Businesses seeking trademark protection in the United States should carefully understand exactly who is responsible for their application, who receives communications from the USPTO, and who bears responsibility when critical deadlines are missed.
Our experience with trademark attorney Katrina Fama, MarkATLaw.com, Michael Beck and Trademark Counsels raises serious questions that, in our view, every business should consider before engaging trademark counsel.
After our original trademark application encountered difficulties, we were approached by Katrina Fama, who represented that she could re-file the application and successfully pursue registration. We purchased what was described as "Package 3", a premium service costing approximately $1,399, in addition to processing charges and official USPTO filing fees.
The package description stated that Office Actions would be handled as part of the service.
We paid the fee.
We paid the filing fees.
We retained counsel specifically so that professional representatives would monitor deadlines, manage communications with the USPTO, and respond to Office Actions on our behalf.
The purpose of hiring a trademark attorney is not merely to complete forms. It is to ensure that the application is professionally prosecuted through the registration process.
Despite this, the application was ultimately abandoned after a USPTO Office Action deadline passed without a response being filed.
Following the abandonment, Katrina Fama advised that the application had been abandoned because "we" had failed to respond in time.
That explanation raises an obvious question.
Who exactly was responsible for responding?
The entire purpose of purchasing a premium trademark prosecution package was to retain legal representation to handle USPTO correspondence and Office Actions on our behalf. We were not acting as our own attorneys. We had hired and paid professionals to do so.
The situation became even more concerning when we reviewed the USPTO records and subsequent correspondence.
The USPTO records identify Michael Beck as the correspondence contact for the application.
As correspondence contact, he was the individual designated to receive communications from the USPTO relating to the matter, including Office Actions.
Invoices relating to the engagement were issued by Trademark Counsels, and the services were marketed and sold through a structure involving both Trademark Counsels and Katrina Fama.
However, when contacted regarding the matter, Michael Beck advised that he had nothing to do with the ongoing trademark application itself.
As clients, we find that position difficult to reconcile with the documentary record.
If a client pays one firm, receives invoices from that firm, sees that firm's representative listed as the USPTO correspondence contact, and later discovers that a critical deadline was missed, it is reasonable for the client to ask who, precisely, was responsible for protecting the application.
Those questions remain unanswered.
However, consumers are entitled to know the facts.
We paid for a package that expressly included Office Action responses.
The USPTO issued an Office Action.
No response was filed before the deadline expired.
The application was abandoned.
The abandonment was discovered by us rather than proactively communicated.
The explanation subsequently provided was that the applicant had failed to respond in time, despite the fact that legal representation had been retained and paid specifically to handle such matters.
Businesses considering trademark services should ask the following questions before signing any engagement agreement:
Who is responsible for monitoring USPTO deadlines?
Who receives USPTO correspondence?
Who responds to Office Actions?
If multiple attorneys or firms are involved, which one is ultimately accountable?
What happens if a filing deadline is missed?
What remedy is available if an application becomes abandoned?
A trademark is often one of a company's most valuable assets. Before entrusting it to any professional representative, businesses should ensure they understand exactly who is responsible for protecting their intellectual property and safeguarding their rights.
Based on our experience, that understanding is essential and based on our experience, we cannot recommend Katrina Fama, Michael Beck, or Trademark Counsels to businesses seeking trademark protection.
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Editor's Note: If you have had similar experiences with Michael Beck, Trademark Counsels and or attorney Katrina Fama at MarkATLaw.com, contact us.
