Greetings. I’m trademark attorney Josh Gerben and today I want to talk to you a little bit about how the trademark registration process works.
The first thing you need to do is submit a trademark application with the United States Patent and Trademark Office. This is a U.S. government agency, commonly referred to as the USPTO.
When you file a trademark application with the USPTO, it will take about three to four months for them to initially review your application. At that point, an examining attorney will review your application and compare it to other trademarks that preexist yours to ensure there is not a conflict. After the examining attorney does this, they will then forward the trademark for publication.
Publication refers to the 30-day comment period that goes with every trademark that’s registered on the Principal Register. During this period, any member of the public can oppose your trademark application. So even if the U.S. government has approved it, potentially a third party feels they could be damaged and then during this 30-day window could oppose your application.
Once that 30-day window closes, the application is sent back to the examining attorney for final review. At that point, as long as you had filed your trademark “in use,” meaning that your products or services were being sold at the time the application was filed, the examining attorney will issue the registration on your trademark, and a registration certificate will come in the mail.
This entire process takes about six to eight months. On average, it tends to be more like eight months than six. And that is how the trademark registration process works.
Why a Federal Trademark Registration is Important
- Public Notice of Your Trademark Registration
A federal trademark registration puts others on notice that your brand exists and is protected across the United States. Once your trademark is registered, it appears in the United States Patent and Trademark Office’s (USPTO) online database. This database is available to the public and allows users to conduct a search to find potentially similar marks to their own. Additionally, once your mark is registered, you can begin to use the registered trademark symbol ” ®” adjacent to your mark. This way, anyone who views your mark, even in a simple search of Google, can identify that it is protected with a federal registration.Furthermore, no one can say that they “never heard of your brand” because U.S. trademark law assumes new companies are checking the USPTO trademark database and doing their due diligence to avoid confusion.
- Nationwide Coverage of Your Trademark Registration
Although a mark can acquire trademark rights by filing for a state trademark registration, or simply by using your mark associated with your goods and services (i.e., common law rights), these protections are geographically limited. A state trademark registration allows protection of a mark used only within that state. Alternatively, choosing not to register your mark at all also severely limits the geographic scope of the protection to which you’re entitled. If you decide to expand your business to a larger geographic area – essentially an inevitability, especially when you consider the importance of online commerce – you may run into issues with similar marks potentially pursuing the same national growth and claims.For example, if someone opens a restaurant in Montana with a similar name to your restaurant franchise, which is located throughout Southeastern U.S., without a trademark registration, you may be forced to co-exist with that new user of the trademark and may be restricted from expanding into that brand’s ‘territory.’ This is a nightmare scenario for a brand owner, including such issues as the added limitations on expansion, competition for digital resources like keyword advertising and social media, and much more. Even if you have a claim, common-law or state-based rights can be difficult (and costly) to enforce, versus the strength of a federal trademark registration.
- Presumption of Ownership and Validity of Your Trademark
A trademark application undergoes vigorous review by a government attorney, called a trademark examining attorney, before a registration is granted by the USPTO. The attorney reviews prior registered trademarks and analyzes your trademark to judge whether the registration should issue. Only after that review, and a thirty-day period of third-party objections, does a registration issue. Therefore, a trademark registration certificate is a powerful document that gives the holder a presumption of national validity over users of non-registered trademarks.Not every word or phrase used by a company is a trademark. However, with a federal registration, you are presumed under the law to own a protectable trademark. While that can be combated with evidence, it puts the burden on the infringer to prove otherwise.
How Much it Costs to Federally Register a Trademark
The ultimate cost of filing to register a trademark depends on a number of factors, including whether to hire an attorney to handle the matter, whether to conduct a comprehensive trademark search prior to filing your application, and the associated government filing fees.
- The Assistance of Experienced Trademark Counsel
At Gerben Law Firm, we offer a flat fee for any trademark search and application (in most cases). This covers thorough research of your desired trademark, consultation time, and the time and logistics required to prepare and file the trademark application itself . This flat fee also covers responses to any non-substantive Office Actions, which are queries from the USPTO. Consultation time is also built into the rate.
- Government Filing Fees
How much it will cost to obtain a federal trademark registration primarily depends on the basis by which the filing is made, and the type of form used. An Applicant who has already been using the mark in commerce will likely only need to make one initial trademark filing, whereas an Applicant who wishes to reserve rights in a trademark with the bona-fide intent to use the trademark in the near future, may do so, but will need to make an additional filing within a year to so to prove that the mark is being used for the goods and services for which the Applicant initially applied. Typically, a government filing fee for a mark already in use is $225/$275 per category, or “class” of goods seeking protection. For example, if you apply to register your brand, and wish to protect cosmetics, shoes, and cellphone cases, these goods fall within three separate classes, so the initial filing fees would total at most $825 (if filed without a comprehensive search and assistance of an attorney). Furthermore, if you originally filed an application to reserve rights to use the mark in the future, the additional filing to prove “use in commerce” will cost $100 per class in government fees.
- The Assistance of Experienced Trademark Counsel
Example of Total Trademark Registration Costs from Gerben Law Firm:
(1) If your mark is already in use at the time of the trademark filing, your total cost of registering a trademark will be the flat legal fee of $950 + US Government filing fee of $275 per class (assuming a single-class application) = $1225.
(2) If you wish to reserve rights to use a mark in the near future, your total cost of registering a trademark will be the flat legal fee of $950 + US Government filing fee of $275 per class (assuming a single-class application) AND a future filing to prove “use in commerce” with a flat legal fee of $250 + US Government filing fee of $100 per class (assuming a single-class application) = $1575.