Bernstein & Associates

Attorneys At Law, P.C.

6600 Peachtree Dunwoody Road, N.E.

Embassy Row 400, Suite 495

Atlanta, Georgia 30328-1649

 

Intelligent Innovation Managementsm

 

Patent, Trademark,                                                                                                             Telephone (770) 671-1755

and Copyright Law                                                                                                                Facsimile (770) 671-1161

Related Business Matters                                                                                                 www.globaliplaw.com



Trademark Registration Overview

The following is an overview of the trademark registration process, including activities, time estimates and cost projections.

1.                  Background:     Trademarks are those words, symbols, colors, sounds or designs which can identify and distinguish goods and products; service marks identify services. In the United States, trademark and service mark rights are created and built up by using the mark in connection with the goods or services. In other words, the U.S. awards the exclusive right to use the mark to the person who actually uses it first. In certain other countries one’s rights can be established by whomever registers the mark first.

2.                  There are two types of applications that can be filed to register a trademark or service mark. The first type is called an “actual use” application, which is based upon the mark actually being used “in commerce” prior to filing the application. The second type is called an “intent to use” application and is based on a stated intent to use the mark in the near future. This second type of application essentially reserves your place in line for registration; however, registration will be conditioned upon establishing actual use. The cost of filing either application is the same. Prior to registration of an “intent to use” application (assuming the application is allowed) we must file a statement saying the mark is being used in commerce.

3.                  Registration of a trademark with the U.S. Trademark Office normally involves the following:

A.                 Search for availability. One or more searches is highly recommended:

i.                     A full search of federal, state and local trademarks that we obtain from a commercial search firm will produce the most exhaustive search of marks that can be reasonably done. The search will take about two weeks to obtain. We will compare your trademark with the marks that are found and provide you with a full written analysis. The cost of this is approximately $1,000-1,200, including the search agency charge, depending on the time required to review and analyze the search.

ii.                   A limited search on our computer in our office by accessing the federal and state trademark registration databases commercially available. Although we do not have access to as full a search strategy, we will find the vast majority of marks that may be similar to the subject mark. It will take about one to two weeks to report back to you the results of the search. This search normally costs about $500-600, depending on the number of marks found and the time to analyze the marks.

iii.                  A “knockout” search is a brief search of the federal database only of the exact mark you are interested in; it does not take into account spelling variations, such as QUIC, KWIK, KWIQ, etc., which could cause a rejection of an application for the mark QUICK. However, it is very useful for an initial look into whether it is worth further inquiry or investment of effort into the mark. The knockout search is also an excellent vehicle where several marks are of interest, only one of which will ultimately be chosen, in order to screen the list at the least cost. The cost is $200 per mark.

iv.                 We recommend not relying on a clear report from the knockout search as a green light for filing an application or commencing use of the mark. A limited or full search should be done to more thoroughly investigate the other marks. A recent court case involving Tommy Hilfiger (where they started using a trademark without getting a good opinion from their attorney, and got stung severely by the prior trademark owner) sent a strong message to everyone to do a thorough search prior to adopting a mark.

B.                 Please bear in mind that a search is not required; the Trademark Office will do their own search of federal registrations. A search is advisable, however, from a business standpoint prior to investing in the launching of a new mark. We provide a discounted rate in the event that you wish to search two or more names in the same search.

C.                 Application and filing: The government filing fee is currently set at $335 per class of goods. This means that if you wish to register the mark in more than one category of goods, such as pharmaceuticals and pigments, or clothing and posters, there will be an additional filing fee for each additional class of goods or services.  Our fee for preparing and filing the application is $1,300 for one application.

4.                  Examination and publication: Approximately seven to nine months after filing the application the Trademark Office will issue their response, which can follow three different paths.

A.                 The first path is that the Trademark Office allows the mark. In this case the allowed application is passed on to be “published” in the Official Gazette, where the public can object or oppose for a period of thirty days the registration of the allowed mark. The time to publish the mark is approximately three to four months. If there is no opposition filed, the mark is registered, which occurs approximately two months later. You should expect no additional charges from us in this path.

B.                 The second path is that the Trademark Office may have a minor objection to a formality in the application. We can ordinarily resolve the issue over the telephone with the Examiner and normally we do not charge for this. If the issue can be resolved, the application is passed on to publication, as described above.

C.                 The third path is that the Trademark Office may refuse to register the mark, for any of a number of possible reasons. In such case we will communicate this to you and provide our recommendations for a response and the cost estimate. Typically, preparing and filing an amendment to the application will cost in the range of $300-$1,000, or possibly more, depending on the amount of time necessary to prepare the amendment. We normally have six months within which to respond to a refusal to register. We will, of course, rely on your instructions before incurring any cost in this regard.

5.                  Allegation of Use: If we filed your application based on your stated “intent to use” the trademark in the future, we must file a document once you start using the mark in interstate commerce, stating that you are now actually using the mark. We must include three specimens of the mark as it is being used. The government filing fee is currently $100 per class and our fee is $200 to prepare the documentation. If the mark is allowed, but you have not yet begun using it, we can file requests for extensions of time in which to file the statement of use. We can file these extensions for up to about two years after allowance. The same fees apply as stated in this paragraph. If you are already using the mark in more than one state, then this section and charges would not apply.

6.                  Registration Certificate Issuance: If the mark is not objected to during publication it will be registered with the Trademark Office and you will receive the official certificate of registration. The registration is valid for ten years and may be renewed for additional ten year periods. Between the fifth and sixth year after registration the owner of the mark must file an affidavit verifying that the mark is still in use. Failure to file the affidavit or to renew the registration may result in abandonment of the registration.

7.                  Foreign priority: If you are interested in filing trademark applications in other countries, it is beneficial to file them within six months after filing the U.S. application. If this is timely done, the foreign applications will be considered to have been filed with the same date as the U.S. application, even though actually filed later. If the mark to be registered has been registered outside the United States, it may be possible to obtain an earlier date of use based upon the prior foreign use. If such is the case, please let us know.

8.                  Total Budget Estimate Recommended: For many routinely processed trademark registrations, we suggest you budget about $1,800 for the process, which would include the knockout trademark search, the application and filing fee in one class, and a minimal amount of amendment work.

9.                  State Trademark Registration: You may want to consider protecting your trademark by registration at the state level, in addition to the federal registration. State registration of the trademark may be advisable if significant use of the mark in the state is intended. The cost of obtaining a state registration in Georgia is $250, which includes our fee and the filing fee of $15, and can be obtained within several weeks, much faster than a federal registration. Only one class of goods or services may be in one application. The benefits of a state registration include statutory damages of up to $10,000 and a possible injunction, in the event of litigation for infringement of the trademark. The incremental minor cost often justifies the additional layer of protection, particularly while a federal application is pending.

We hope that the above answers some of your questions. We accept Visa, Master Card and American Express as alternative methods of payment. Please feel free to give us a call if you have additional questions or would like us to perform an initial availability search for your mark.

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