What’s the Cost to Hire a Trademark Attorney?

By Josh Gerben, Esq.

The biggest question that most business owners have before engaging a trademark attorney is simple: “How much will it cost?”

Budgets tend to be the most influential factor in many brand owners’ business decisions. This is especially true for owners of newer or smaller brands. Brand owners often assume that hiring a trademark attorney is out of the question, so they either implement self-help trademark practices or forgo trademark protection altogether.

At Gerben IP, we recognize that all brands, large and small, deserve quality trademark service at a reasonable price – so our services were developed with a tight legal budget in mind. Most of our services are offered at a flat rate, making them easy-to-budget. We’re here to help to ensure that not only your registration process runs quickly and smoothly but that maintaining your trademark is equally as seamless.

Here’s what you should know about the cost of hiring a trademark attorney.

The cost of hiring our trademark attorneys to register a trademark

There are many trademark registration services available online, however not many of them offer a consultation with a licensed trademark attorney to review the results of the clearance search.  Moreover, many lawyers who claim to offer filing services do not have the depth of experience of our firm.  It is rare that you will find a law firm that has registered over 6,500 trademarks (as ours has done since 2008). There is simply no replacement for experience when working with the USPTO to get a trademark application approved.

Gerben IP offers a flat-fee trademark registration package to make it easy and affordable for a client to register their trademark. Not only do applicants receive a consult with a licensed attorney, but their trademark application is also closely monitored and reported on throughout the process.  Our pricing is as follows:

If you engage a Gerben IP trademark attorney to register your trademark, here’s what you will receive:

1. Clearance Search: Our services start with a comprehensive review of trademarks that are registered at the federal and state level, as well as trademarks that are in use but not registered. We’ll draft a report based on our findings, which will provide insight into whether your desired mark is available and the chances of successfully registering your mark with the USPTO. We’ll also schedule a consultation with you and one of our experienced attorneys to go over your trademark search report.

2. Trademark Application: Once we’ve broken down your search report and determined the exact mark you’ll apply for, we’ll continue to work with you to gather the necessary information to prepare your application. Our application prep includes: a) determining the correct owner for your trademark, b) selecting the exact trademark to register, c) drafting a description of your goods/services that will be acceptable to the USPTO, and d) preparing specimens to show the USPTO how your trademark is being used.  Once the application is completed, we will send it for your review and approval. Once you approve the application we will have it electronically filed with the USPTO.

3. Monitoring Your Application: Once your application is filed, we will track it as it progresses through the registration process. We’ll also notify you if your application gets hung up for some reason. Here are a couple of items that might happen after you file a trademark application:

• Receiving an Office Action: After an application is filed the USPTO may issue a formal document called an Office Action to request additional information about a brand or to resolve an issue identified with an application. If the issue is administrative (e.g. clarifying the information in your application) our firm will respond to the Office Action on your behalf so that your application can proceed to registration.
  
  Certain Office Action responses (called substantive office actions) are not included within our flat rate fee because they tend to require extensive legal resources to resolve. Should your application require a substantive Office Action response to address legal concerns (such as your trademark being too close to another registered trademark), we will conduct an initial review of the issue that is preventing your application from registering and evaluate the best options to overcome the stated issue. Based on our years of experience, we will recommend the best course of action, we will quote you based on the amount of time we estimate it will take to conduct legal research and draft a formal response document.
  
  Regardless of whether your Office Action is clerical or substantive, you’ll have three months from the date it was issued to respond. Failure to respond on time can result in your application being abandoned – so it’s crucial to stay on top of your response deadline or to hire an attorney who will manage the deadlines for you.
  
• Receiving a request to file a Statements of Use: Before the USPTO will register your trademark, you must provide proof that you are using your trademark in connection with the goods and services listed in your application. If you’ve already begun using your trademark when your application is filed, your “proof” of trademark use will be submitted in your initial application.
  
  If you haven’t yet launched your goods or services, the USPTO will still allow you to protect your desired trademark by filing an “intent to use” application. Intent-to-use applications are prepared and filed the same way as any other type of application, but they require you to submit an additional filing (about 8 – 12 months after your initial application filing date) to show “proof” that you are using your mark in connection with your goods or services.
  
  As part of our flat fee trademark registration services, we will notify you when it’s time to file your statement of use, and counsel you through what is needed to satisfy the USPTO’s “proof” of use requirements.
  
  If you haven’t yet launched your brand when the time comes to make this filing, you have the option to file up to 5 six-month extensions of time. Our attorneys can also work with you to prepare and submit this filing. Our flat rate does not include extension filings, so there is a $300 legal fee per extension filed.

The cost of hiring our trademark attorneys for post-registration maintenance

Once your trademark has become federally registered with the USPTO, your duties as a trademark owner begin. Trademarks are valuable business assets that must be maintained in order to retain and even grow in value.

Trademark maintenance can include filing trademark renewals at the required intervals and policing the use of your mark. Our attorneys are equipped to help you maintain your registration, at an affordable additional cost. Some of our maintenance services and fees include:

1. Renewal Filings: To maintain your trademark registration, it’s essential that you file your renewals on time. Failing to file your renewal within your deadline could cause your trademark registration to be canceled. We recognize how valuable trademarks are to a business, so to help ensure that all deadlines are met we offer a flat legal fee of $650 for trademark renewal services.

Our flat legal fee includes monitoring your registration and notifying you in advance of upcoming deadlines, assessing what is needed to submit your trademark renewal and “prove” continued trademark use, filing your renewal paperwork, and of course – answering any questions you may have about your registration or renewal.

You can hire Gerben IP to assist with your trademark renewal filings here.

2. Change of Ownership: We recognize that things change in the course of business. Whether it’s a new business name or transferring your trademark rights to a new owner altogether, we offer a flat legal fee of $650 to help you transfer ownership of your trademark.

Our flat fee change-of-ownership services include an initial intake process to ensure that we understand the nature of the transfer, drafting a detailed transfer document/agreement, filing the transfer paperwork, and monitoring it as it’s processed.

All changes in the ownership of a trademark must be documented with the USPTO, and while it may seem simple, it’s critical that your transfer paperwork is properly prepared so that your trademark has a clean “chain of title.” If your change in ownership is not done correctly, your registration could be canceled altogether.

You can hire Gerben IP to assist with your Change of Ownership needs here.

3. Trademark Monitoring: To maintain your registration, you’ll need to know if there are any trademarks out there that could weaken your rights in the trademark or cause you to lose your registration altogether.

Unfortunately, the USPTO won’t monitor the trademark registry for you, nor will they let you know if an application that could threaten your mark has been filed, so it’s up to you to check for potential threats to your registration. To help you identify marks that may infringe your trademark rights our firm offers a trademark monitoring service for a flat annual fee of $395.

Once you sign up, we’ll monitor all new trademark filings made to the USPTO to catch any attempts by a third party to register a mark that’s the same, or similar to, yours; we’ll check for unlawful uses of your mark in commerce made by a third party, and we’ll look into how you’re using your trademark to help ensure you are in compliance with U.S. trademark law.

We also send you quarterly reports that detail any potential infringements of your mark and the recommended course of action to address them.

You can hire Gerben IP to assist with your trademark monitoring services needs here.

4. Trademark Enforcement: Policing the use of your trademark is key to maintaining the federal registration of your trademark. Your registration gives you the exclusive right to use your mark in connection with your registered goods/services, and under U.S. trademark law, you’re required to prevent others from using your mark. If you don’t regulate the use of your trademark, your rights could become weaker, and ultimately you could lose your registration.

Our trademark enforcement services are tailored to meet individual client needs. If you’re looking for trademark enforcement services, please contact us for a free consultation and quote.

We offer a range of trademark enforcement services, including:

• Enforcement/Cease-and-Desist Letters
• Settlement Negotiations
• Trademark Opposition Proceedings
• Trademark Cancellation Proceedings
• Trademark Litigation
• Counterfeit and Online Infringement

Final thoughts

The goal of our trademark services is to save our clients time and money.  If you have any questions about your particular trademark, you can feel free to contact us. We respond to most inquiries within 24 hours.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.