AI for Trademark Lawyers Moving Beyond Search to Expanding Work

Bloomberg Article Introduction

Trademark attorneys already use artificial intelligence to aid their work, and in the future the technology could fundamentally alter the nature of their practices.

Companies hired by law firms use AI routinely to help check the availability of trademarks and spot threats. But some attorneys can envision a world where AI allows—if not forces—them to add value for clients earlier in the process: the brand idea-generation phase. AI platforms like ChatGPT may not replace large companies’ marketing departments, but it could be a tool for attorneys to help smaller business, some say.

Trademark attorney Ashley G. Kessler of Cozen O’Connor, who has a marketing undergraduate degree, recently asked ChatGPT for available cannabis brand names. She liked the results—which included Herb Heaven, Weed Wishes, Ganja Garden, and Grass Gorilla—and said eight of 10 didn’t appear to conflict with registrations at the US Patent and Trademark Office. Some of those did appear to be in use in web searches indicating possible common law—unregistered—rights, she noted.

Kessler said attorneys should start incorporating such prompts into how they perform availability searches going forward. The technology will raise expectations, with even marketing departments looking to attorneys to help find available brand ideas.

“I think that long term it’s going to go beyond the client approaching IP counsel with a set of proposed names,” Kessler said. “I anticipate a system where clients expect more from lawyers than they already do. I think ultimately it will just push lawyers to become a one-stop shop for our client.”

Already In Use

The debate over whether AI can create intellectual property has generated legal questions and controversy in the fields of copyright and patents. But who created a trademark is legally irrelevant, as the core issues are generally who used it first in commerce, and on what product.

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