Trademark & Copyright Application Attorney
There is much more involved in a trademark application than you might think. We encourage you to contact an experienced intellectual property lawyer at Trojan Law Offices (TLO®) to discuss trademark protection and your other intellectual property needs.
What Type of Trademark?
Not all trademarks are equal under the law. There is a hierarchy in trademark law that includes the following categories:
- Fanciful trademarks, made up words that have no connection to the product, are given the highest level of protection with the greatest scope.
- Suggestive marks are given the second highest level of protection. These marks suggest a quality or feature of the product, but do not describe the product.
- Descriptive marks describe the product and are given much less protection.
- Generic marks are given no protection at all. Generic marks are words that are the same as the common name of the product.
Hence, the selection of the mark is the key first step in a legal process that many businesses treat far too casually.
Trademark Applications: Strategies and Steps
There are many strategies for filing and prosecuting a trademark application. The strategies are generally not complicated, but if you have never played the game before, you can end up obtaining an education in trademark law at the expense of your trademark rights. Simply obtaining the registration is not proof of success. The real measure of success comes with evaluating the scope of protection granted by the registration, because not all registrations are of equal value.
Trademark Availability Search
The cost to conduct a trademark availability search is $525, which includes a complete search of all federal and state registrations and pending applications, a search of common law rights, and an oral opinion concerning the availability of the proposed mark. The total cost for filing a trademark application is $695 per mark per international class, which includes the government filing fee. If the trademark is a logo, we may need to engage a draftsman to prepare the logo in conformance with Trademark Office drawing rules, which usually costs an additional $60 to $90.
What If a Trademark Application Is Rejected?
The Trademark Examiner may object to the trademark application for a variety of legal and technical reasons. We usually receive an office action within approximately six months of filing the application.
If the trademark examiner rejects the trademark application because someone else used the same or a similar trademark before you, we will advise you whether we think we can overcome the rejection and the cost of fighting the rejection. The cost of responding to the examiner is billed at our hourly rates, which range from $285 to $420. Responding to an office action can cost $600 for a simple rejection to $4,000 for a complicated response requiring extensive briefing and declaration. We always advise you in advance of the expected cost before responding.
If There Are No Objections by the Trademark Examiner
In many cases, the examiner has no objections. In that case, we receive a notice of allowance. The registration usually issues within 3 to 4 months of the notice of allowance. If there is no objection, then there are no additional fees and the application is published by the Trademark Office to see if any other company has an objection.
If There Is an Objection from the Public
If no objection is received from the public within 30 days of publication, then a federal trademark registration will issue for your trademark. An objection from the public can result in a form of litigation called an opposition proceeding before the Trademark Trial and Appeal Board. This is a costly process that can range from $5,000 to $25,000, depending upon its complexity. We will advise you long in advance of such proceedings if they seem to be a likely result of your trademark application.
Related Obligations and Costs
If you have not yet used your trademark in the United States, you can file an “Intent to Use” application to reserve the name here. Filing such an application costs the same as a regular trademark application. The cost to convert an ITU application to a regular application is $350, which includes the government filing fee. Six-month extensions of time in which to use a trademark that has been reserved by an ITU application cost $375, which includes the government filing fee. Once you actually use the trademark in the United States, you must convert your ITU application into a regular application. The total cost, including filing fees, for an ITU trademark application and its conversion to an actual use application, is $1,045.
If you are involved in an opposition or cancellation proceeding in the Trademark Office, the cost is billed at our hourly rates as discussed above.
TLO takes pride in providing patent, trademark, and copyright application services at reasonable rates. We welcome the opportunity to discuss your intellectual property needs, and to explain how we can help you protect your ideas and inventions. Contact Trojan Law Offices to schedule a consultation with an IP attorney.