Top 10 Questions to Ask Your Trademark Registration Attorney Before Hiring

When you're building a business, protecting your brand is not just an option—it's a necessity. In India, where brand theft, counterfeiting, and IP disputes are increasingly common, trademark registration provides essential legal protection. But to navigate the process efficiently and avoid costly mistakes, hiring a qualified trademark registration attorney can make all the difference.

However, not all attorneys are created equal. The wrong legal partner can delay your application or even lead to rejection. To ensure you're working with the right professional, here are the top 10 questions you should ask a trademark registration attorney before hiring them.

1. Are You Specialised in Trademark Law or General IP Law?

Not all IP lawyers have deep expertise in trademarks. Some specialize in patents or copyrights. It's crucial to work with someone who regularly handles trademark registration cases in India, understands the Trade Marks Act, 1999, and stays updated on changes by the Controller General of Patents, Designs and Trade Marks (CGPDTM).

Why this matters:
An attorney with trademark-specific experience is more likely to anticipate objections, expedite the process, and secure your registration faster.

2. Have You Handled Cases Similar to Mine Before?

Trademark needs vary by industry. Whether you're in tech, fashion, or FMCG, you should choose an attorney who understands the nuances of your sector.

Pro Tip: Ask for examples of businesses they've helped register trademarks, especially in your niche. This can give you confidence in their ability to handle industry-specific challenges.

3. What Is Your Process for Conducting a Trademark Search?

A comprehensive trademark search is critical to avoid conflicts with existing marks. Ask whether the attorney will conduct:

• Preliminary knockout search

• Phonetic and visual similarity search

• International (Madrid Protocol) search, if applicable
  

Bonus: A good attorney will also provide a legal opinion on the registrability of your mark.

4. Will You Help With Trademark Class Selection?

India follows the NICE Classification system, with 45 classes covering goods and services. Choosing the wrong class can leave your brand unprotected.

Your trademark attorney should assist you in identifying and selecting the most relevant classes to maximize your brand's legal coverage.

5. What Is Your Fee Structure?

Transparency in pricing is a must. Get clarity on:

• Fixed vs. hourly rates
  

• Government filing fees vs. attorney charges
  

• Extra charges for objections, oppositions, or renewals
  

Pro Tip: Don’t just go for the cheapest option. Look for value over cost—an experienced attorney can save you from future legal expenses.

6. How Will You Handle Objections or Office Actions?

Trademark applications in India often receive objections under Section 9 (descriptive/trademark not distinctive) or Section 11 (similar to existing marks). Ask:

• Will you draft the response to objections?
  

• Do you include this service in your base fee?
  

The ability to strategically respond to objections can significantly impact the success of your application.

7. Do You Handle Trademark Opposition Proceedings?

If a third party files an opposition against your trademark, you'll need legal representation to defend it.

Check if your attorney:

• Has experience in opposition proceedings before the Trade Marks Registry
  

• Will draft and file counterstatements
  

• Can represent you in hearings, if needed
  

8. How Long Will the Process Take and What Are the Key Stages?

Understanding the timeline and phases of trademark registration in India helps set realistic expectations.

Key stages include:

• Trademark search
  

• Filing application (Form TM-A)
  

• Examination report
  

• Reply to objections (if any)
  

• Publication in the Trademark Journal
  

• Opposition period (4 months)
  

• Final registration (TM certificate)
  

A professional attorney should give you a clear roadmap from start to finish.

9. Will You Help With Trademark Monitoring and Renewal?

Trademark protection doesn’t end with registration. You need to:

• Monitor for similar marks
  

• Renew your registration every 10 years
  

Ask if the attorney offers:

• Trademark monitoring services
  

• Reminders or auto-renewal assistance
  

• Legal action against infringers
  

10. Can You Assist With International Trademark Protection?

If you plan to expand globally, check if your attorney can help with:

• Filing through the Madrid Protocol
  

• Coordinating with foreign IP attorneys
  

• Trademark registration in specific jurisdictions (like the U.S., EU, UAE, etc.)
  

Global expertise indicates a well-networked and experienced attorney.

Final Thoughts

Hiring the right trademark registration attorney in India can protect your brand, streamline the process, and prevent costly legal challenges. These ten questions will help you screen for competence, clarity, and compatibility before you commit.

Your brand is one of your most valuable assets. Don’t cut corners when it comes to protecting it.