Category: Trademark Law

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:

1. 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.
2. 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.^®
3. 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.
4. 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.

1. McFadden, Fincham
   225 Metcalfe Street Suite 606 Ottawa, Ontario, K2P 1P9
   Finalist, 3 TM lawyers, 11 total lawyers.
2. Brazeauseller LLP
   55 Metcalfe Street Suite 750 Ottawa, Ontario, K1P 6L5
   Finalist, 3 TM lawyers, 16 total lawyers.
3. Kaufman Laramée
   800 Boulevard René-Lévesque Ouest Suite 2220 Montréal, Quebec, H3B 1X9
   Finalist, 3 TM lawyers, 20 total lawyers.
4. Phillips, Friedman, Kotler
   Place Du Canada Suite 900 Montreal, Quebec, H3B 2P8
   Finalist, 3 TM lawyers, 21 total lawyers.
5. Emery Jamieson LLP
   1700, 10235 – 101 Street Edmonton, Alberta, T5J 3G1
   Finalist, 3 TM lawyers, 23 total lawyers.
6. Pallett Valo, LLP
   90 Burnhamthorpe Road West Suite 1600 Mississauga, Ontario, L5B 3C3
   Finalist, 3 TM lawyers, 25 total lawyers.
7. Nexus Law Group LLP
   1500 – 701 West Georgia Street Vancouver, British Columbia, V7Y 1C6
   Finalist, 3 TM lawyers, 4 total lawyers.
8. Valadares Law Group LLP
   38 Auriga Drive Suite 200 Ottawa, Ontario, K2E 8A5
   Finalist, 3 TM lawyers, 5 total lawyers.
9. 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.
10. Finlayson & Singlehurst
    70 Gloucester Street Ottawa, Ontario, K2P 0A2
    Finalist, 4 TM lawyers, 5 total lawyers.
11. Cameron MacKendrick LLP
    Suite 410 150 York Street Toronto, Ontario, M5H 3S5
    Finalist, 4 TM lawyers, 6 total lawyers.
12. Miltons LLP
    Suite 700, 225 Metcalfe Street Ottawa, Ontario, K2P 1P9
    Finalist, 4 TM lawyers, 7 total lawyers.
13. 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.
14. 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.
15. Coastal Trademark Services
    P.O. Box 12109 2200 – 555 West Hastings Street Vancouver, British Columbia, V6B 4N6
    Finalist, 5 TM lawyers, 5 total lawyers.
16. 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.
17. Marks & Clerk
    280 Slater Street, Suite 1800 P.O. Box 957, Station B Ottawa, Ontario, K1P 5S7
    Finalist, 6 TM lawyers, 14 total lawyers.
18. 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.
19. Piasetzki & Nenniger LLP
    120 Adelaide Street West Suite 2308 Toronto, Ontario, M5H 1T1
    Finalist, 6 TM lawyers, 6 total lawyers.
20. Sim & McBurney
    6Th Floor 330 University Avenue Toronto, Ontario, M5G 1R7
    Finalist, 7 TM lawyers, 19 total lawyers.
21. Cassan Maclean
    307 Gilmour Street Ottawa, Ontario, K2P 0P7
    Finalist, 7 TM lawyers, 7 total lawyers.
22. Riches, McKenzie & Herbert LLP
    Suite 1800 2 Bloor Street East Toronto, Ontario, M4W 3J5
    Finalist, 8 TM lawyers, 10 total lawyers.
23. Deeth Williams Wall LLP
    150 York Street, Suite 400 Toronto, Ontario, M5H 3S5
    Finalist, 8 TM lawyers, 18 total lawyers.