In today’s competitive business environment, intellectual property can be one of the most valuable assets a company can own, and needs to be properly protected. The best protection you can give your company’s brand name or slogan and the name you use on your products and services, is a Federal Trademark Registration with the U.S. Patent & Trademark Office (“USPTO”).
The first step in the trademark process is an initial telephone consultation. During our initial consultation we will:
- discuss the types of trademark applications and the requirements for obtaining a trademark registration,
- conduct a quick search of your chosen mark to eliminate any obvious obstacles to registration, and
- discuss the pros and cons that relate to the strength and protectability of the proposed mark.
We charge $145 for the initial consultation.
After the initial consultation, we may recommend that the company explore other marks or move forward with the trademark search and investigation.
Trademark Search and Investigation
Next, we will begin our comprehensive search and investigation into the registrability of the trademark. We will conduct a customized trademark search using various tools including the Seagis program by CompMark. We will review Federal and State trademark registrations, as well other common law uses.
We will also review your marketing and product packaging to find an appropriate specimen to submit with your trademark application. Then we will review options as to how best to describe your goods or services to avoid any objections from the USPTO.
Though the results of our search are not guaranteed, our findings should be a good indicator of the success of your trademark application.
We conduct an initial search before filing any trademark application. For those clients who paid an Initial Consultation fee, we charge $350. For other clients, we charge $495.
Trademark Application and Filing:
Once you have decided to move forward with your trademark, we will work with you to put together the appropriate application materials for your application.
If you are already using your trademark in commerce the fee to begin the trademark application for a wordmark or design mark is $495 per mark plus a $250 filing fee per class charged by the USPTO (this is in addition to the research/investigation fee described above).
If you have not yet started using the trademark, we will file the application on an “Intent to Use” basis. There are additional legal and filing fees to file an “Intent to Use” application, which we will explain to you if an “Intent to Use” trademark application is chosen.
Once filed, the application is examined by the USPTO. A certain amount of correspondence with the USPTO can be expected, in order to reach a satisfactory description of the goods or services, to deal with any required disclaimers, and to overcome Office Actions.
In some cases, the trademark examiner may consider your proposed trademark to be confusingly similar to a trademark already registered in the United States or otherwise object to registration through what is called an “Office Action.” We charge our regular hourly rate for any time spent responding to Office Actions and may require a retainer based on the expected amount of work.
Approval, Publication, and Opposition:
Once approved by the examiner, your proposed trademark is published in the Official Gazette which constitutes public notice of your trademark. Once published, any person may oppose the registration on certain grounds. An opposition may be settled, may take a long time to resolve, or may never be resolved. If an opposition is received, we will advise you and secure instructions as to whether you wish us to proceed with the application. We charge our hourly rate for work on an opposition and require a retainer based on the expected amount of work.
If all goes well, the time required from initial search to final registration of a trademark averages 9 to 12 months. Minor objections from a trademark examiner may delay registration to 12 to 18 months. If major objections to the application arise or opposition to registration is filed, registration will take longer to achieve or may never be obtained. Read more about the timing of a trademark application here.
Once your trademark is registered, you have continuing responsibilities and duties that arise after certain periods of time in order to maintain your trademark registration with the USPTO. As a trademark client, we will calendar future renewals in our trademark docketing system, DocketTrak, and notify you when they are due. DocketTrak includes a trademark watch service that scans all USPTO Trademark applications every day and detects matches to your trademark. It also detects when the USPTO has determined that an application is confusingly similar to one of your existing registrations or pending applications. If we receive an alert from DocketTrak, we will notify you of any concerns.
Five Year Mark
Around the fifth year after your trademark registration, the USPTO requires a Section 8 Declaration of Use filing. You may also This declaration must be filed within the six year period after registration. You may also be eligible to file a Section 15 Declaration of Incontestability. The Section 15 Declaration of Incontestability is optional but recommended in most cases as it can provide additional safeguards to protect the trademark.
The USPTO charges a $425 fee for a combined Section 8 and Section 15 filing per class.
We charge $345 for our time on a mark.
Ten Year Mark
Between the ninth and tenth years after registration and every ten years thereafter, you must file a Section 8 Declaration of Use and a Section 9 Renewal Application.
The USPTO charges a $525 fee for a combined Section 8 and Section 9 filing per class.
We charge $345 for our time on a mark.
Trademark owners must police their mark and stop infringers who are using their mark or a confusingly similar one. If a trademark owner does not do so, it can be harder to assert trademark rights at a later time.
As a trademark client, we will monitor your trademark using DocketTrak. DocketTrak includes a trademark watch service that scans all USPTO Trademark applications every day and detects matches to your trademark. It also detects when the USPTO has determined that an application is confusingly similar to one of your existing registrations or pending applications. If we receive an alert from DocketTrak, we will notify you of any concerns.
You should also police your trademark by conducting simple searches on search engines and by setting search engine alerts, such as Google alerts, and conducting a search of state business entity names.
If you find infringement, we offer several non-legal solutions to attempt before resorting to litigation.
For example, if you find a violation via Google Ads you can file a complaint with Google. Google will generally investigate whether the infringing use of the trademark violates their company policies. They will not, however, investigate the use of keywords.
You may also send a “cease and desist” letter. We have had success sending these letters especially if the trademark infringement was accidental or unknowing. Finally, a “Notice of Intent to Sue” with a draft complaint attached shows your intend to protect your trademark and will litigate if required.
If you do find a legal remedy becomes necessary, you must seek an injunction and file a lawsuit against the infringer.
We are happy to discuss your options and help you map out a plan of attack against trademark infringers.
Using the Trademark “™” and “®” Symbols
According to the United States Patent and Trademark Office, you may use the “™” (trademark) designation to publicize your claim without registration. However, you receive more rights and benefits with federal registration, after which you may use the symbol “®.” The registered symbol may only be used in connection with the goods listed in the federal registration during the time the registration is valid. Most businesses put the symbol in the upper right corner of the mark, but such placement is not required.
More information on maintaining your trademark can be found at the United States Patent and Trademark Office’s website, http://www.uspto.gov/trademarks/process/maintain/prfaq.jsp.