USPTO Trademark Application Process: What are the most important factors?
When it comes to registering trademarks, there is a tradeoff between time and money. The more you invest upfront in the trademark application process, the more you will save in the long run. Invest less upfront, and you will likely spend more resources later. Without doing proper due diligence upfront, you might end up with insurmountable obstacles that no amount of time or money will resolve.
Here are the most important factors that affect how much time and money will be spent in the trademark application process:
- Trademark search
- a search can identify highly similar registered trademarks that can block your application;
- Goods and/or services
- the number of USPTO classes of goods and services will determine the filing cost;
- Actual Use or Intent-To-Use
- whether you are already using the mark or intend to use the mark in the future will determine the overall cost and timing of your application; and
- Earlier Filing Date
- a later filing date can cause your application to be suspended until earlier-filed applications for similar trademarks are concluded.
Need to register your trademark? Email US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you register your trademark.
What are the stages of the trademark registration process?
The USPTO trademark registration process is not as complicated as patenting. If certain steps are done correctly and promptly, a trademark application can get approved in a matter of 7 to 12 months. As we dive into the various steps for registering a trademark, it may help to think of the trademark application in the following stages:
- Pre-filing: What steps should you take before filing a trademark application?
- Filing and examination of your trademark application
- Registration and renewals (post-registration maintenance)
What is the purpose of a trademark search?
The purpose of a knockout search is to assess the risk of a likelihood of confusion refusal. Our knockout search, therefore, will look for live USPTO trademark filings that are highly similar to your desired mark. The goal is to identify any highly similar trademarks that present a high risk of blocking your new trademark application. The cost of this search will depend upon the number of relevant classes of goods or services to be searched.
Our knockout search does not include unregistered trademarks used by others.
Should you search for unregistered common law trademarks?
Our knockout search does not include unregistered common law trademarks. There are pros and cons to searching for common law trademarks. Pros include a greater awareness of unregistered trademarks that might present a risk of a future opposition or cancellation of your trademark filing. Other trademark attorneys may disagree, but I believe this risk is small. Nonetheless, a small risk is not equal to zero risk.
Cons of searching for common law trademarks include the additional cost and delay. Moreover, a potentially greater risk lies in jeopardizing your trademark application. Every applicant who files a trademark application with the USPTO must sign a declaration stating that, to the best of their knowledge, no one else has the right to use the trademark.
Suppose you search for unregistered trademarks and find a business using a similar mark for related products. You decide to apply for your trademark anyway knowing that the USPTO trademark examining attorney will not reject trademark applications based on common law trademarks. How would you truthfully sign the above declaration stating that you believe no one else has the right to use a similar mark?
How much does a trademark application cost?
$1,200 per class of goods or services is our initial filing cost for a federal trademark application, including our $650 flat rate and the $550 USPTO filing fee. A lower USPTO fee of $350 per class might be available depending upon how the goods or services are identified.
Our initial filing cost does not include the knockout search discussed above.
Several additional trademark services and events may potentially lead to further legal costs. To control trademark application costs, focus on the following factors:
- number of classes of goods and services;
- filing basis (whether based on actual use of the trademark or an Intent-To-Use); and
- the number of Office Actions from the USPTO, if any, and the type of rejections or requests therein.
How many classes of goods or services?
The number of classes and the filing basis can be determined upfront. It is possible to file for several items while keeping costs down if those items fall under the same class. Our firm provides flat attorney’s fees for filing trademark applications.
Intent-To-Use (ITU) vs. Actual Use
Every trademark application must have a filing basis. If your trademark is already being used on the goods or services to be identified in the application, then we would file a use-based application.
Otherwise, we can file an Intent-To-Use application for a trademark that you have not yet used in commerce. Later on, an ITU application will incur an additional cost of $650 per class to file the evidence of use. You can also request a 6-month extension of time at a cost of $650 for each extension request.
Trademark rejections: the unpredictable and potentially large expense
What can be unpredictable and expensive is the possibility of a trademark rejection by the USPTO trademark examiner (“examining attorney”). The ideal situation would be sail through the trademark application process without any Office Actions.
Costs of responding to a trademark Office Action range widely. For a simple non-substantive Office Action, our firm currently charges a lower flat rate. For refusals based on likelihood of confusion or mere descriptiveness, our fee would be approximately $2,800 to $5,500 for dealing with each type of refusal.
If there are no Office Action rejections, the total cost of a trademark application with a single class of goods/services from initial filing to registration would be $950 per class for a use-based application. For an Intent-To-Use application, the total cost would be $1,550 per class if no extensions of time are requested for filing use evidence.
Pre-filing considerations: How to reduce trademark application costs and delays
The most practical way to reduce trademark registration costs is to minimize the probability of rejections. Two of the most common rejections comprise likelihood of confusion (your mark is too similar to another trademark filing) and the mere descriptive refusal (your mark describes a quality, characteristic or feature of your identified goods/services).
To reduce the risk of a likelihood of confusion refusal, consider a knockout trademark search prior to filing your trademark application. Knowing the existence of similar marks previously filed by others can help you recognize obvious landmines before applying for the mark. Such searches often lead to additional brainstorming of new marks which may be less risky than the original mark. Our firm’s trademark filing package includes a knockout search at no additional cost.
Experienced trademark attorneys can also provide guidance on the potential of a merely descriptive rejection. The issue is not how common the words are, but the meaning of the words in your mark in relation to your goods or services.
Trademark application process from start to finish
Initial filing of trademark application
Several important decisions need to made before filing a trademark application. Will you apply for the word mark or design mark? If you file for a design mark such as a stylized logo, should you file in black-and-white or color? Will the filing basis be Intent-To-Use, actual use or a foreign registration? What are the goods or services? Should any generic words be disclaimed? Do you own any registrations of similar marks? Will the US application claim priority to a foreign application for the same mark?
Trademark Office Actions
After the initial filing, it takes about 3-6 months for a USPTO examining attorney to review the application. If the examining attorney rejects the application or has any questions or requests, an Office Action will be issued giving the applicant a non-extendable 6-month period to respond.
Mark Published for Opposition
If there are no rejections or any prior objections have been fully resolved, the mark will be published for opposition. The applicant will receive a Notice of Publication identifying the starting date for the 30-day window during which any member of the public may oppose the registration of the mark. If there are no oppositions, then the USPTO will issue either the certificate of registration (for marks where evidence of use has already been submitted) or a Notice of Allowance for ITU applications.
Notice of Allowance (ITU only)
A Notice of Allowance provides the applicant with a 6-month timeframe to submit the Statement of Use. If additional is required, the applicant may request further extensions of time in 6-month increments for a maximum total of three years from the Notice of Allowance date.
Certificate of Registration
You may place the circle R symbol only after the certificate of registration has been issued. Renewal deadlines are generally at the 6-year anniversary of the registration date, the 10-year anniversary, and every ten years thereafter. Unlike patents, trademark registrations can continue indefinitely as long as the owner continues using the mark on the goods or services identified in the registration.
The USPTO has provided helpful trademark application timeline here.
How long does the trademark registration process take?
For a use-based application, then the shortest length of time to receive a registration would be approximately 9-15 months, assuming no Office Actions and no oppositions. According to the USPTO trademark dashboard, it can take 8-10 months to receive the initial review by the USPTO trademark examining attorney.
For an Intent-To-Use application, tack on the additional time required to make use of the mark on the goods/services and submit a proper Statement of Use with acceptable specimens.
What should you do after your trademark is registered?
Only now can you use the circle R symbol. Calendar the trademark registration renewal deadlines or make sure your IP attorney will remind you of these deadlines.
Need to file a trademark application?
Reach out to patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you get your trademark registered.
