What does the trademark registration process look like?
The process to obtaining a registered trademark in the United States typically takes about 8-10 months from start to finish.
Once an initial trademark application is filed, it will take about three to four months for the USPTO to initially review your application. This step of the process consists of an attorney that works for the USPTO (called an “examining attorney”) reviewing your application to determine if any conflicts exist with another trademark and ensuring your application meets all the technical requirements set forth by the USPTO.
After the examining attorney has finishing reviewing your trademark, they will then forward the trademark for 30-day period of “publication.” During this “publication” period, any member of the public (or another company) can oppose your trademark application. Therefore, even if the USPTO has approved your trademark application, a third party may feel they could be damaged by the eventual registration of your trademark and oppose your application during the publication period.
Once the 30-day publication window closes, the application is sent back to the examining attorney for final review. At that point, as long as you 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.
Why is a federal trademark registration important?
Here are three of the top reasons that obtaining a registration your trademark is important:
1. Registration provides public notice of your trademark.
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.
2. Registration provides nationwide coverage of your trademark.
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.
3. Registration provides 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 does it cost 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.
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.
2. 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 $350 per category, or “class” of goods and/or services 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. 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” (typically due about a year after the initial filing) will cost $100 per class in government fees.
3. Example of total trademark registration costs from Gerben Law Firm:
When filing an “IN USE” trademark application: 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 $350 per class (assuming a single-class application) = $1225.
When filing an “INTENT TO USE: trademark application: 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 $350 per class (assuming a single-class application) AND a future filing to prove “use in commerce” with a flat legal fee of $350 + US Government filing fee of $100 per class (assuming a single-class application) = $1575.
Frequently Asked Questions about the Trademark Registration Process
1. How do I federally register a trademark?
To federally register a trademark, you must submit a trademark registration to the United States Patent and Trademark Office, or USPTO. There, your application will be reviewed by an examining attorney. This US government attorney will compare your mark to existing trademarks to be sure there is no conflict. If the examining attorney approves your application, it will go for a 30 day period of “publication” where any third party can file an “opposition” to your application. If no oppositions are received then your trademark application will be cleared for final registration.
2. How long does it take to obtain a federal trademark registration?
The process to register a federal trademark generally takes 8 to 10 months from start to finish. With that said, many trademark applications will receive an “Office Action” during the application process. This is typically a request for some modification of the language in the application by the USPTO. The issuance of an Office Action can slow the process down by several months.
3. Is it possible to expedite a federal trademark registration?
A trademark registration may be expedited in a limited number of circumstances, including matters of litigation, the possibility of infringement, or the need to obtain a U.S. trademark to obtain a foreign registration. You must fill out a petition and show a significant need for the application to be expedited. Situations that might apply to a large number of other businesses may not be considered for expedition. With that said, even under an expedited examination, the registration process still typically takes around 5 to 6 months.
4. Do I need a trademark registration to sell products or services?
You do not need a trademark registration to sell goods or services. Doing business without a trademark registration, however, may leave you vulnerable to infringement from other businesses. Also failure to complete a proper trademark search and go through the trademark registration process may result in you unknowingly infringing on someone else’s trademark. A registered trademark will provide your business valuable legal protection against infringement and is considered an asset on the books of your company. A trademark registration can have significant value when you go to sell your company and/or take on investors.
5. How much does it cost to obtain a trademark registration?
The cost to obtain a trademark registration is dependent upon several factors. The factor that typically determines the cost is how many products and/or services you need to include in your trademark application. At Gerben Law Firm, we offer an affordable flat fee trademark registration package of $950. This flat fee provides our clients with a comprehensive federal, state and common law trademark search, consultation time with an attorney, and, the preparation and filing of a trademark application. Government fees vary based on the number of classes and whether your mark is currently in use.