Should you hire a trademark attorney to file a trademark application?
As with most things in life, there is a tradeoff between time and cost. If have you more time and less money, you can try to file a trademark application yourself. If time is more valuable, then it makes sense to hire an experienced trademark attorney who can help you avoid or minimize delays. An Office Action by the trademark examiner (“examining attorney“) can lead to months of delay. A seasoned trademark attorney can help reduce the risk of trademark Office Actions by searching relevant trademark filings and then fine-tuning your trademark application before filing.
How much does it cost to file a trademark application through a trademark attorney?
Costs for filing a trademark application with the USPTO depend primarily upon three key 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.
Since the number of classes and filing basis can be determined upfront, our firm provides flat attorney’s fees for filing trademark applications. The variable cost factor in federally registering a trademark is the possibility that the trademark examining attorney may reject your application or issue follow-up questions and requests.
Currently, my firm charges $950 per class of goods/services, including our $600 flat rate and the $350 USPTO filing fee. If the application is based on an Intent-To-Use, then our firm currently charges $600 per class to file the Statement of Use (or Amendment to Allege Use as the case may be), including the $100 USPTO fee. So, the total cost of an ITU application is $1,550 per class, not including any responses to Office Action rejections.
How can you reduce the cost and timeframe of a trademark application?
The most practical way to reduce cost is to minimize rejections. Two of the most common rejections consist of likelihood of confusion (i.e., your mark is too similar to another trademark filing) and mere descriptiveness (your mark describes a quality, characteristic or feature of the goods/services identified in the application).
A knockout trademark search helps identify potential sources of a likelihood of confusion rejection. Knowing what similar marks have already been 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.
What is the trademark application process?
We think checklists are wonderful, so we’ve provide a simple questionnaire/checklist to help clients gather the necessary information and materials for a trademark application. If an ITU application is contemplated, then specimens of use and dates of first use are not required. Please contact us to request our Trademark Form.
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.
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