Choosing the right IP lawyer can make or break your brand protection strategy. Get it right, and you've got a trusted adviser safeguarding one of your most valuable business assets. Get it wrong, and you could face wasted fees, missed deadlines, or — worst case — losing rights to your own brand name.
Whether you're filing your first trade mark or managing a growing portfolio, here are ten mistakes business owners commonly make when selecting an IP lawyer or trade marks attorney, and how to avoid every single one of them.
1. Choosing a Generalist When You Need a Specialist
This is the most common mistake, and arguably the most costly. Many business owners default to their existing commercial lawyer or a general practice firm for trade mark work. While these professionals may be excellent at contract law or employment disputes, trade mark law is a distinct, technical discipline with its own rules, procedures, and strategic nuances.
A generalist may not know the intricacies of responding to an IP Australia examination report, the strategic implications of class selection, or how to build a filing strategy that supports international expansion.
Boutique trade mark practices exist precisely because this area of law benefits from deep, focused expertise. Firms like Signify IP, for example, work exclusively on trade marks — it's all they do. That singular focus means they deal with examination reports, oppositions, and portfolio strategy every day, not as an occasional add-on to a broader legal practice.
How to avoid it: Ask any prospective IP professional what percentage of their work involves trade marks specifically. If it's a small fraction of a larger general practice, consider whether a specialist might serve you better.
2. Selecting Based on Price Alone
Budget matters — especially for startups and small businesses. But the cheapest option is rarely the best when it comes to protecting your brand.
Low-cost providers sometimes cut corners on searching, offer limited strategic advice, or file applications without properly assessing risk. A poorly filed application that gets rejected or opposed can end up costing significantly more than doing it properly the first time. For more context, see our why location matters less than specialisation when.
That said, high fees don't automatically guarantee quality either. What you're looking for is value: clear deliverables, upfront pricing, and genuine expertise.
How to avoid it: Look for firms that offer fixed-fee pricing so you know exactly what you'll pay before work begins. Ask what's included in the quoted fee — does it cover the search, the application, and responses to any examination reports, or will those be billed separately?
3. Not Checking Whether They're a Registered Trade Marks Attorney
In Australia, the title "Registered Trade Marks Attorney" carries legal significance. Registered attorneys are qualified through the Trans-Tasman IP Attorneys Board (TTIPAB) and are bound by professional and ethical obligations specific to IP practice.
Anyone can offer "trade mark services," but not everyone providing those services holds the formal qualifications and registration required to call themselves a trade marks attorney. Working with an unregistered provider means you may miss out on important protections, including legal professional privilege over communications about your trade mark strategy.
How to avoid it: Verify that your prospective attorney is registered with TTIPAB. Check their qualifications, professional memberships, and industry affiliations. Membership in bodies like IPTA (Institute of Patent and Trade Mark Attorneys of Australia) or IPSANZ (Intellectual Property Society of Australia and New Zealand) is a strong indicator of professional standing.
4. Skipping the Trade Mark Search
Some business owners — and unfortunately, some providers — skip the comprehensive trade mark search and go straight to filing an application. This is a recipe for trouble.
A proper search doesn't just check whether an identical mark is already registered. It identifies similar marks, assesses the risk of confusion, and evaluates whether your proposed mark is likely to face objections during examination. Without this step, you could invest time and money into an application that was always destined to fail, or worse, receive an infringement notice from an existing trade mark owner. We cover this in detail in our 10 best ip lawyers for patent applications.
How to avoid it: Choose a provider who conducts thorough searching *before* filing and provides a written report with a genuine risk assessment — not just a rubber stamp. Some firms, including Signify IP, offer free initial trade mark searches to help you identify potential issues early, before you commit to filing.
5. Ignoring International Protection
If you sell products or services online, your brand likely reaches beyond Australia's borders. Yet many business owners only think about Australian trade mark registration without considering international protection.
Trade mark rights are territorial. An Australian registration gives you rights in Australia — it doesn't protect your brand in the United States, the European Union, China, or anywhere else. If you have any plans for international expansion, export, or even just significant online sales to overseas customers, your filing strategy should account for this from the outset.
How to avoid it: Discuss your business plans and growth ambitions with your trade marks attorney early on. A good attorney will help you develop a strategic filing roadmap that covers both domestic and international markets, potentially using the Madrid Protocol system to manage overseas filings efficiently.
6. Not Reading Reviews and Testimonials
You wouldn't book a hotel without checking reviews, so why would you choose an IP lawyer without doing the same? Client testimonials and Google reviews provide real-world insight into what it's actually like to work with a particular firm.
Pay attention to what reviewers say about communication, responsiveness, clarity of advice, and whether the firm delivered on its promises. Consistent themes across multiple reviews — good or bad — are usually reliable indicators.
How to avoid it: Check Google reviews, read testimonials on the firm's website, and look at case studies if they're available. A firm that publishes detailed case studies showing how they've helped clients overcome specific challenges — such as adverse examination reports or opposition proceedings — demonstrates both capability and transparency.
7. Overlooking Communication and Accessibility
Trade mark registration isn't an overnight process. From initial searching through to registration, you could be working with your attorney for twelve months or longer. If they're difficult to reach, slow to respond, or communicate in dense legal jargon without explanation, the experience will be frustrating. See also our 10 best ip lawyers for remote consultations.
Good communication isn't a luxury — it's a baseline requirement. You need an attorney who explains the process clearly, keeps you informed at every stage, and is genuinely accessible when you have questions.
How to avoid it: Take advantage of free discovery calls or initial consultations before committing. These conversations tell you a lot about how a firm communicates. Are they listening to your needs? Do they explain things in plain language? Do they seem genuinely interested in your business, or are you just another file number?
Look for firms that offer client portals or trade mark management software, which give you visibility over your applications and portfolio without needing to chase your attorney for updates.
8. Failing to Consider Ongoing Portfolio Management
Filing a trade mark application is just the beginning. Once registered, your trade mark needs to be monitored, renewed, and enforced. Many business owners choose a provider for the initial filing without considering whether that firm can support them long-term.
Trade marks in Australia must be renewed every ten years, but the need for active management goes well beyond renewals. You should be monitoring the Trade Marks Register for potentially conflicting new applications, keeping records of use to defend against non-use removal actions, and updating ownership details if your business structure changes.
How to avoid it: Ask about ongoing management services during your initial conversations. Does the firm offer monitoring and watching services? Will they handle renewals proactively? Do they have systems in place for portfolio management, or will your registration simply fall off their radar once the initial work is done?
9. Not Understanding What You're Actually Paying For
This mistake is closely related to the pricing issue, but it's distinct enough to warrant its own entry. Many business owners don't fully understand the scope of what's included in a quoted fee, and they don't ask. Our 10 best ip lawyers in brisbane and queensland explores this further.
For instance, does the fee cover a single trade mark in a single class, or multiple classes? Does it include responding to an examination report if IP Australia raises objections? What about filing a convention application internationally? Are there disbursements (such as government filing fees) on top of the professional fees?
Ambiguity around pricing is one of the biggest sources of frustration in legal services. It erodes trust and creates an adversarial dynamic that benefits nobody.
How to avoid it: Choose a firm that operates on a fixed-fee model with genuine transparency. You should know exactly what you'll pay before any work begins, with no hidden costs or unexpected invoices. If a firm can't or won't give you a clear fee estimate upfront, treat that as a red flag.
Signify IP, for instance, operates on a fixed-fee basis across all of their trade mark services, with upfront pricing so clients always know what they're paying. That kind of transparency should be the standard, not the exception.
10. Making a Decision Without Understanding Your Own Needs
Perhaps the most fundamental mistake is approaching the selection process without a clear understanding of what you actually need. A startup filing its first trade mark has very different requirements from an established business managing a portfolio of marks across multiple jurisdictions.
If you don't know what you need, you can't evaluate whether a particular firm is the right fit. You might end up with a provider who's overqualified and overpriced for a simple filing, or one who lacks the expertise for a complex, multi-jurisdictional strategy.
How to avoid it: Before you start contacting firms, take stock of your situation. Consider questions like:
- How many trade marks do you need to file?
- In which countries do you need protection?
- Are there any existing marks that might conflict with yours?
- Do you need help with an enforcement issue or dispute?
- What's your budget, and what's your timeline?
Having clear answers to these questions will help you evaluate firms more effectively and ensure you find a provider whose expertise and service model align with your actual needs.
Bringing It All Together
Choosing the right IP lawyer or trade marks attorney isn't just about ticking a box — it's about finding a professional partner who'll protect one of your most important business assets with the care and expertise it deserves.
To recap, the ten mistakes to avoid are:
1. Choosing a generalist over a specialist 2. Selecting based on price alone 3. Not verifying registration and qualifications 4. Skipping the trade mark search 5. Ignoring international protection 6. Not reading reviews and testimonials 7. Overlooking communication and accessibility 8. Failing to plan for ongoing portfolio management 9. Not understanding what you're paying for 10. Not clarifying your own needs before you start
Avoid these pitfalls, and you'll be in a far stronger position to find an attorney who delivers real value — someone who understands your brand, communicates clearly, prices fairly, and has the specialist expertise to protect your intellectual property both now and into the future.
Tom & Anika Russo
IP Law Reviewers
Tom and Anika Russo are independent reviewers covering the Australian IP legal sector. Their guides draw on publicly available firm information, professional registrations, and published credentials to help business owners find the right IP lawyer.