Problem, meet process.
I’ve been looking for a new Canadian trademark law firm for a long time. But it’s harder than it should be to find the right fit.
Clock Tower Law Group currently has 15 Canadian trademark matters in our docket. It’s not a huge number, but more of our clients are considering filing trademarks (and patents) in Canada every year. (And I suspect it would be a much larger number if Canada joined the Madrid Protocol, but I digress.) We have three different law firms handling these matters in Canada. Most of these matters were inherited from large US law firms, most of which use large Canadian firms. None of the large Canadian firms has ever reached out to us to try to win (or keep) our business.
When we were looking for a law firm in Europe to handle European patent and trademark matters for us, we reviewed hundreds of law firms before settling on one that shares our values. At the conclusion of the selection process, I met with the firm in person, which confirmed that we’d made the right choice. (We use Phillips and Leigh for all European IP matters, and they are great.) I used the same approach to find a Canadian trademark firm. Here’s what I looked for:
- More than one attorney. Solos are great, but they tend to come and go. Plus it’s nice to have multiple lawyers so they can cover for each other.
- No more than 12 trademark attorneys, no more than 25 total attorneys. I’m a firm believer in small groups. If there are more people you group than can fit around a conference room table, then your group it too big. It’s easy to get lost in a large law firm. If a large law firm has to alphabetize its lawyers, then it probably has to alphabetize its clients. Which is one reason our tagline is The Law Firm Where Everybody Knows Your Name.®
- Business and/or IP focus. IP doesn’t operate in the real world the way it’s taught in law school. I have worked in the real world, and this helps shape how my firm provides legal services. We believe that an ounce of prevention is worth a pound of cure. We work hard to keep our clients out of trouble. We don’t do litigation.
- Tech-savvy. I don’t want paper. I want electronic records. I want a firm that it great with email. I want a firm that gets the Internet (in general) and domain names, the web, and social networking (in particular). I just got done plowing through four boxes of paper files that we inherited from a large US firm. Yuck. (When we transfer files to another firm, we send CD-ROMs to the new firm.)
I went the website of the Canadian Intellectual Property Office and copied down the names of all Canadian trademark lawyers (from the CIPO trade-mark agents list). I dumped that info into a database, massaged the data, and identified a list of possible firms. I eliminated the too small, the too big, and those whose websites I couldn’t find. (If you’re a trademark law firm and I can’t find your firm’s website by Googling your name, then you’re not a very good trademark law firm.) CIPO only counts trademark attorneys, so some firms that looked small were huge (with comparatively small trademark groups). In any event, my methodology isn’t perfect, but it’s probably about 80% accurate. And that’s a lot better than you can get from any lawyer search engine. Or Google for that matter.
Here are the 23 finalists. How will I choose from these 23? I won’t. One will choose us. I assume that the savvy law firm will monitor the web for mentions of (and links to) itself. Reputation monitoring, blogging, domain name monitoring, trademark watching – this is the work of the tech-savvy trademark law firm.
I welcome – and expect – inquiries from firms on this list (or those not on this list who think they should be). One of these law firms will win Clock Tower Law Group’s present and future trademark business.
- McFadden, Fincham
225 Metcalfe Street Suite 606 Ottawa, Ontario, K2P 1P9
Finalist, 3 TM lawyers, 11 total lawyers. - Brazeauseller LLP
55 Metcalfe Street Suite 750 Ottawa, Ontario, K1P 6L5
Finalist, 3 TM lawyers, 16 total lawyers. - Kaufman Laramée
800 Boulevard René-Lévesque Ouest Suite 2220 Montréal, Quebec, H3B 1X9
Finalist, 3 TM lawyers, 20 total lawyers. - Phillips, Friedman, Kotler
Place Du Canada Suite 900 Montreal, Quebec, H3B 2P8
Finalist, 3 TM lawyers, 21 total lawyers. - Emery Jamieson LLP
1700, 10235 – 101 Street Edmonton, Alberta, T5J 3G1
Finalist, 3 TM lawyers, 23 total lawyers. - Pallett Valo, LLP
90 Burnhamthorpe Road West Suite 1600 Mississauga, Ontario, L5B 3C3
Finalist, 3 TM lawyers, 25 total lawyers. - Nexus Law Group LLP
1500 – 701 West Georgia Street Vancouver, British Columbia, V7Y 1C6
Finalist, 3 TM lawyers, 4 total lawyers. - Valadares Law Group LLP
38 Auriga Drive Suite 200 Ottawa, Ontario, K2E 8A5
Finalist, 3 TM lawyers, 5 total lawyers. - Kirby Eades Gale Baker
112 Kent Street, Suite 770, Tower B Box 3432, Station D Ottawa, Ontario, K1P 6N9
Finalist, 4 TM lawyers, 10 total lawyers. - Finlayson & Singlehurst
70 Gloucester Street Ottawa, Ontario, K2P 0A2
Finalist, 4 TM lawyers, 5 total lawyers. - Cameron MacKendrick LLP
Suite 410 150 York Street Toronto, Ontario, M5H 3S5
Finalist, 4 TM lawyers, 6 total lawyers. - Miltons LLP
Suite 700, 225 Metcalfe Street Ottawa, Ontario, K2P 1P9
Finalist, 4 TM lawyers, 7 total lawyers. - Hitchman & Sprigings
Scotia Plaza 40 King Street West, Suite 5704 P.O. Box 120 Toronto, Ontario, M5H 3Y2
Finalist, 4 TM lawyers, 8 total lawyers. - Goudreau Gage Dubuc S.E.N.C.R.L./LLP
2000 Mcgill College Suite 2200 Montreal, Quebec, H3A 3H3
Finalist, 5 TM lawyers, 19 total lawyers. - Coastal Trademark Services
P.O. Box 12109 2200 – 555 West Hastings Street Vancouver, British Columbia, V6B 4N6
Finalist, 5 TM lawyers, 5 total lawyers. - Macrae & Co.
P.O. Box 806, Station B 222 Somerset Street West Suite 600 Ottawa, Ontario, K1P 5T4
Finalist, 5 TM lawyers, 7 total lawyers. - Marks & Clerk
280 Slater Street, Suite 1800 P.O. Box 957, Station B Ottawa, Ontario, K1P 5S7
Finalist, 6 TM lawyers, 14 total lawyers. - Macera & Jarzyna LLP
427 Laurier Avenue West 12Th Floor P.O. Box 2088, Station D Ottawa, Ontario, K1P 5W3
Finalist, 6 TM lawyers, 18 total lawyers. - Piasetzki & Nenniger LLP
120 Adelaide Street West Suite 2308 Toronto, Ontario, M5H 1T1
Finalist, 6 TM lawyers, 6 total lawyers. - Sim & McBurney
6Th Floor 330 University Avenue Toronto, Ontario, M5G 1R7
Finalist, 7 TM lawyers, 19 total lawyers. - Cassan Maclean
307 Gilmour Street Ottawa, Ontario, K2P 0P7
Finalist, 7 TM lawyers, 7 total lawyers. - Riches, McKenzie & Herbert LLP
Suite 1800 2 Bloor Street East Toronto, Ontario, M4W 3J5
Finalist, 8 TM lawyers, 10 total lawyers. - Deeth Williams Wall LLP
150 York Street, Suite 400 Toronto, Ontario, M5H 3S5
Finalist, 8 TM lawyers, 18 total lawyers.
Erik,
About 10 minutes ago, I finally decided I’d had enough with my Canadian IP firm…$200 to tell my an application had been approved for publication is just the tip of the iceberg. I’m glad you posted this because I was just starting to think about how I would go about finding another firm — and I see that you’ve already done my work for me! Thanks much!
Carl
Ronald Law Group (Pittsburgh)
Erik,
You cannot go wrong with Marks & Clerk. However, keep us in mind too for your future patent and trademark needs in Canada. http://www.pinskylaw.ca
Best,
Andrey
Greetings Adrian,
I also have a nice feeling about small firms, they have a more personal touch with you and don’t rob with your bank account. however there is a issue with long term reliability.
I agree on the point of selecting a tech savvy firm. You don’t want someone talking about the internet as a series of tubes.
Hi Erik,
I think Marks & Clerk Canada is the firm you are looking for!
I would be pleased to answer any questions you might have regarding our services. Please let me know when and how you would like to be reached.
My preference is e-mail and my address is cmorrison@marks-clerk.ca
Thanks for your interest and I could not agree more with your comments.
Coleen
Greetings Adrian,
I didn’t say that all small firms come and go, nor did I exclude small firms as part of my methodology. I excluded firms with fewer than 2 lawyers (on the CIPO register). We’re a small firm (3 people, 2 lawyers and 1 paralegal), so I certainly appreciate the service that small firms provide.
Regards,
Erik
An interesting process but I would like to note that not all small firms come and go in personnel or existence and demonstrate very strong committment and focus. I would like to have chance to address your patent and trademark activities in Canada until you complete your selection process. Naturally if you do complete it and move your work then we will both have enjoyed working together and learnt but we will have demonstrated the work ethic present in small firms where clients are faces we know and not names in a list.
Erik … a very interesting approach. It is a shame you filtered small firms where personal committment and ethics mean we don’t come and go. I’d be happy for our firm to help you in Canadian matters until you select a firm with your process which will mean we failed to address you as a client correctly.