STEPS TO OBTAIN A FEDERAL TRADEMARK REGISTRATION
1. We recommend that you have a preliminary computer search of the federal trademark conducted for your proposed mark before you begin use of the mark. Provide us with all the goods and services you will or might use your mark on to obtain the broadest possible search. A preliminary search can be completed in a few hours and costs $150 – $200.
2. If the preliminary search looks good, we then recommend conducting a full, outside trademark search which will uncover additional federal, state and common law marks. In the US trademark rights are based upon use and not registration, so it is very important to uncover all limited, non-registered uses of senior trademark users. You could be sued for trademark infringement by even a non-registered user that uses a mark only occasionally or within a small locality. A full search costs approximately $800. Full outside searches cover the U.S. Federal Trademark Register, the State Trademark Register and a wide variety of common law marks which may be found in hundreds of trade journals, magazines, newspapers and other current publications. These comprehensive searches now also cover the internet.
PROCEED TO STEP A OR B, BELOW. Filing fee for trademark application is $325 per class. Legal fee to prepare one trademark application is $400.
A. If mark is in use or will soon be in use, file Application based upon actual use. 3. Provide our offices with shipping invoices or other evidence of first use of the mark both in interstate and intrastate commerce together with a specimen or label for preliminary review. You will need 4 identical specimens such as labels, shipping containers, or brochures or signage for service marks to file the trademark application. These may be submitted by email in jpeg format, or you may mail hard copy to our offices and we will scan them into the proper jpg format for you for electronic filing.
3. We will promptly inform you of the filing date and serial number of your trademark application as we receive this information from the Trademark Office. Because we file all or almost all applications electronically, you should receive this information the same day as we file your U.S. trademark application.
4. Should we receive any communications from the Trademark Examiner we will forward these to your offices together with our analysis of the situation, together with a flat fee price quote to prepare a Response. The approximate time from filing the application to publication or receipt of a first office action is a minimum of six to nine months.
5. After your application has been approved, your mark will be published in the Official Gazette of the Trademark Office and is subject to opposition by third parties for a period of 30 days. If the mark is not opposed, a registration will issue in approximately 3 to 4 months.
6. You will receive your Certificate of Registration approximately 8 to 10 weeks after the opposition period has ended. A Section 8 Affidavit of continuous use is due during the 5th year of registration and the registration will expire after ten years. Counsel will docket these dates and provide you with timely reminder notices as to when these documents are due.
B. If mark is not currently in use, you may file a trademark application based on Intent to Use
4. Request a trademark application based upon Intent to Use from our offices which may be sent back to our offices by fax. Sign and send back signed application.
5. As soon as you begin use of the mark, notify counsel. You will have up to 36 months from the date of the Notice of Allowance to begin use of your mark, provided proper 6 month extensions of time are filed, for additional legal and filing fees.
6. Receive copies of any Office Actions for discussion and review with counsel. The approximate time from filing the application to publication or receipt of a first Office Action is a minimum of six to nine months.
7. Mark will be published in the Official Gazette of the Trademark Office for opposition by third parties for a period of 30 days, and if not opposed, mark will be scheduled to register in approximately 3 to 4 months, if you have submitted your specimens and first use dates. Otherwise, if you have not begun use before the Opposition period, you will only receive a Notice of Allowance. Every six months thereafter you will need to either file your Statement of Use with specimens and first use dates or apply for a 6 month extension of time.
8. Receive Certificate of Registration from counsel. A Section 8 Affidavit of continuous use is due during the 5th year of registration and the registration will expire after ten years. Counsel will docket these dates and provide you with timely reminder notices as to when these documents are due.
Costs to obtain a Federal Trademark Registration*
Preliminary Computer Search ……………………… $200
Full Outside Comprehensive Search ……………….. $800
Legal Fee to prepare Trademark Application ………. $400
Filing fee (paid to US Trademark Office) ………….. $325 per class
Approximate Total $1,725 per mark
Cost to maintain your Federal Trademark Registration.
Proof of use (Section 8 & 15 Declaration)……………$800 (includes $400 filing fee)
Renewal at 10 years………………………………….$900 (Includes $500 filing fee)
* – Please note that searches are not required, but are highly advised. You could be subject to an injunction and triple damages and attorney’s fees if your new mark infringes upon that of a more senior user.
Normal Hourly rate – $150 to $200 for all subsequent work — all faxes, phone calls and letters. Above fees quoted are for the application work only and do not include total costs to issue a trademark registration.
We do not guarantee trademark or patent searches, except to the extent we have utilized our best knowledge and efforts, and to the extent required by law, regulation or ordinance. All fees quoted subject to change. No legal opinions or facts contained herein. Contact the author for further information.