What Might it Cost to Register Your Trademark?

TRADEMARK REGISTRATION COSTS

A frequent question I receive from both existing and prospective new clients, asks for a ballpark estimate on the amount of time obtaining a trademark will take.

This is a pretty broad question and leads to a potentially complex answer.

While time estimates are always dependent on the specifics of each case, there are some general guidelines that can help focus the time estimate.

The time estimate derives from the process.  We outline the process based on several phases of activity, summarized as follows:

  • First, We need to consult with the client. This usually takes at least one (1) or two (2) hours, but can take much more time depending on the client’s specific needs and activities.  The consultation process allows us to determine exactly what the clients proposed trademark is and what classification and description of goods and services will apply. This information not only helps define the scope of legal services, it also establishes the scope of the trademark search report which is obtained in phase two.
  • Second, In phase two we order and obtain a comprehensive trademark search report. We allocate approximately one (1) hour to the report ordering process.  The report typically costs Six Hundred Fifty Dollars ($650.00). This report surveys not only the registrations contained in the United States Patent & Trademark Office database but also reviews all state trademark registration databases, all internet usage and all common law usage throughout the United States.
  • Third, Phase three involves a review of the report which typically takes anywhere from two (2) to four (4) hours, or more, depending on the amount of information contained in the report.
  • Fourth, Phase four contains an additional consultation with the client wherein the results of the report review and analysis are discussed and explained. This process will usually range from one (1) to three (3) hours depending on the extent of potential conflicts gleaned from the report. The analysis may be discussed with the client verbally or it may be memorialized in a written letter when appropriate.
  • Fifth, Phase five is to draft the actual registration application and to submit it electronically at the USPTO. This process takes from one (1) to two (2) hours depending on the extent to which the client furnishes the necessary information that must accompany the application. For example, images of the mark used on the goods or in the connection with the delivery of services must be furnished and samples of any symbol or logo marks must be provided in accordance with the USPTO’s specific criteria.
  • And, Finally, we must allocate costs for the filing fee for registration in a single class.  The USPTO fee for a single mark registered in a single class is currently about $350.00.  (This varies slightly based on the type of application used for the registration process)  The fee is increased, of course, where multiple classes are included in the scope of the application.

From this, a typical trademark registration project can range of anywhere from Three Thousand Two Hundred to Four Thousand Five Hundred Dollars ($3,200-$4,500) for budgeting and cost projection purposes. It should be kept in mind that these cost projections can be off by an order of magnitude of fifty percent (50%) or more. Thus, for example, in very simple and straight forward matters an application can be completed for One Thousand Five Hundred Dollars ($1,500). At the same time, in more complicated matters total fees and costs through and beyond submission of the trademark application can reach or exceed Ten(s) of Thousands of Dollars. Registrations encompassing large portfolios of marks, or registrations covering foreign jurisdictions can cost tens or even hundreds of thousands of dollars.

It is important to keep in mind that filing the application really only begins the review and approval process. The examining attorney might issue an office action that must be dealt with. This action might be resolved with as little as a thirty (30) minute phone call or the action might require multiple hours of research and drafting time to respond to and resolve potential impediments to registration.

Likewise, a third party can file an opposition to the registration after it is approved by the examining attorney and published. Opposition proceedings can turn into litigation matters costing tens of thousands of dollars and taking months or years to resolve. On the other hand, an opposition matter can sometimes be resolved expeditiously with a mutually acceptable, co-existence agreement, negotiated between the parties and implemented with very little effort and work. These are unknowns that ultimately drive the total cost of the project and cannot be fully anticipated at the outset.

Even after the trademark is successfully registered, ongoing maintenance and periodic required filings require an on-going budget to keep and preserve the mark.

Generally, a client seeking a trademark should ask about and establish a clear budget for the process at the beginning of the engagement.  Many firms require an advance retainer deposit of some negotiated amount as a threshold matter to accept a new engagement.

Clients should also be aware that the trademark related discussion typically leads to other areas of legal services needs. For example, the creation of business entities, the creation of contracts and assignments, non-disclosure agreements, lending arrangements, licensing arrangements, copyright protection and trade secret protection, all relating to the underlying business that gave rise to the trademark registration inquiry.

The above discussion is for illustrative and discussion purposes only.  It does not constitute an estimate for any actual or particular client matter.

No legal representation is accepted by the author except in accordance with a written client specific fee agreement.

For potential representation inquiries, please feel free to contact our office for further information.

Supplement Your Trademark

When securing a Federal trademark for a business or product everyone must go through the  the United States Patent and Trademark Office (USPTO). When doing so the hope is to come out with a secured trademark in the principal register, however for some, Plan B might be the way to go when Plan A fails.

The Principal register is most commonly where trademarks are registered. These trademarks are distinctive and clearly set apart the corresponding product or business. Such trademarks are not merely descriptive and have satisfied the qualifications set by the USPTO. At times, certain trademarks, while almost ‘hitting the mark’ just don’t quite reach it. It is at these moments that the USPTO will recommend these “trademarks with potential,” to the supplemental register instead of denying registration altogether.

The supplemental register consists of trademarks that have the potential of reaching distinctive effectiveness and just need an extra something to drive out of the purely descriptive phase. While not the final goal, accepting amendment to the supplemental register does present advantages. You may still bring forth suites of infringement in federal court. Your mark can be sighted by an examiner against similar marks looking to be registered and by being listed on the supplemental register your mark gains priority over other marks seeking registration at a later date. Another perk of accepting supplemental registration is the legality of using the ® mark rather than the ™ label. This grants you federal protection instead of the basic protection of common law. Furthermore it grants a more stable and legitimate aspect to your trademark.  Finally, after five years on the supplemental registration list, reapplication for principal registration is granted and having been on the supplemental list helps prove that your trade mark has gained distinctiveness. This will help secure your principal registration.

A few negative aspects of the supplemental register is that despite its step upward, it is not official. Supplemental registration does not grant exclusive rights to the registered owner. This means that the Department of Treasury cannot stop importation of infringement into the US, the mark does not automatically gain incontestability after five years and the mark is not truly valid until gaining principal registration.

Despite these few downfalls, having the protections the supplemental register provides, over no federal protections at all, may be a better path to follow. When Plan A fails, this Plan B is a good way to go to begin the securing and protection of your brand.

Article Reference:

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Disclaimers in Trademark Office Actions

In my intellectual property practice I am frequently educating clients in the nuances of trademark and copyright law. I currently have a trademark matter where the issue of using disclaimers as part of the registration process is being explored. Thanks to attorney Galvani for his article: Disclaimers in Trademark Office Actions | Tom Galvani – Arizona Patent and Trademark Attorney http://ow.ly/g0VFs