To build a successful brand, you will need to know some trademark basics that ensure your brand is strong, enforceable, and compliant with applicable law.
You need an experienced trademark lawyer who will clear your trademark for use and registration in the United States and throughout the world.
The process of selecting and using a trademark is far more complex than people often realize. Just because your chosen company is available with the Secretary of State that does not mean the same name is available to use as a trademark.
The test for trademark infringement is whether your trademark is likely to be confused with a pre-existing trademark. As experts in trademark law, we ascertain whether a particular trademark is available for you to use and register.
If you select a trademark that is confusingly similar to a trademark previously used by another person or company, you will be vulnerable to infringement lawsuits. These suits lead to legal fees, the potential for damages, and the possibility that you will need to rebrand your company, which is costly, both in terms of money and time.
How should you go about the important process of selecting and obtaining trademark rights?
Our free and best advice is simple: find an experienced trademark lawyer who will get it right for you the first time. When clearing a trademark, it’s important to consider the following things:
- The benefits of a federal trademark registration
- The trademark clearance and acquisition process
- The costs and fees you can expect to incur
What are the benefits of a federal trademark registration?
Trademark rights derive from use. While you can get limited trademark rights in a small geographical area without obtaining federal registration, it is not advisable. Federal trademark registration grants you:
Federal registration provides you with the benefit of constructive nationwide use. If, for example, you are only using a mark in New York and New Jersey, a federal registration still enables you to stop an infringing use of your mark in California.
Once you have a federal registration, it is presumed that you own the mark not only for the designated product or service listed in the registration but also any related services. After five years of registration, your mark will become incontestable, which means, except for very limited reasons, no one can challenge its validity.
With a federal registration, you may bring an action in federal court for trademark infringement against another use of your mark under Section 32 of the Lanham Act. The damages you can obtain under this section are generally much greater than those for an unregistered mark.
You may use your U.S. registration to obtain registration in many foreign countries on an expedited basis.
Additionally, federal trademark registration offers the following intangible benefits:
Protection:
A federal registration protects you by making it much less likely that others with similar sounding trademarks will attempt to interfere with your ability to use your trademark. To do so, they would need to invalidate your registration, which is difficult.
Monetary Value:
A federal registration is considered intellectual property, which increases the value of your company. It gives prospective purchasers confidence that you have the right to use your name.
What is involved in determining if your selected trademark is available for use and registration?
Before beginning the trademark process, it is necessary to understand that you may only use a trademark that does not conflict with another, earlier trademark. Importantly, trademarks do not need to be identical to conflict. U.S. courts engage in a sophisticated process to determine whether a potential consumer would be likely to confuse one trademark with another.
To ensure you are selecting a conflict-free trademark:
First, we order and review a comprehensive search report for your proposed trademark.
This report includes pending applications and registrations with the Patent and Trademark Office (PTO) and the use of any similar mark in commerce, both in print and online. By ordering this report, we can tell whether you are likely to encounter any additional objections from others as well as from the PTO.
Next, we draft an opinion letter.
Based on the search report, our opinion letter advises if your mark is available for use and registration. This letter is important. In case you are ever sued for trademark infringement, it will help to insulate you from damages associated with intentional infringement.
Finally, we draft, file, and prosecute the application.
After we file your application with the PTO, we will respond to any objections, either significant or inconsequential, that the PTO may raise in light of other applications or registrations. After all arguments are submitted, should an appeal to the Trademark Trial and Appeal Board be needed, this will be billed separately.
How long does the trademark process take?
The entire process generally takes about one year from the time we file the application to when we receive your certificate of registration. This process includes three stages: consultation, docketing, and guarantee. In the meantime, you can and should use your trademark.
Consultation: Throughout the process, we’ll discuss any documents and information needed to obtain your registration. This is included in your flat fee.
Docketing: Our docketing process puts the onus on us to ensure that all the important dates of the application and registration process are met.*
Guarantee
It usually takes about three to four months for the PTO to contact our office with any substantive or procedural objections. It can take longer if the PTO believes there are any impediments to registration, as in the existence of a trademark filed prior to your mark. If for some reason the PTO does not register your chosen trademark, we will not charge you any additional fees for a new trademark of your choosing. The only costs will be the new search report fee and any other out of pocket disbursements.
*Because of the clearance process, appeals to the TTAB are almost always unnecessary. If we need to take an appeal to the TTAB, that would be the subject of a separate pricing agreement.
How much will this cost?
We offer two options, the basic service and the comprehensive option:
Basic Service:
Flat fee of $3,500
Included:
- We order and review a comprehensive search report, consult on the availability of your trademark for use and registration in the United States, and file your application with the PTO.
- Your mark goes on our docket, and we will alert you to any deadlines you need to meet to maintain your registration.
- Additionally, we provide you with a consultation on how to properly use the mark in commerce.
Breadown of Costs:
The search report costs
approximately $1,000
The filing fee is
approximately $275.00 per class
(add on an additional $275 for each additional class)
Our legal fees are
approximately $2,200
These costs change over time and depend on the type of filing you need.
Not Included:
Often, the PTO renders no objections. However, if objections are made to your trademark, appeals to the Trademark Trial and Appeal Board are made separately.
Comprehensive Package:
Flat fee of $5,850
Included:
- As with the basic package, we order and review a comprehensive search report, consult on the availability of your trademark for use and registration in the United States, and file your application with the PTO.
- Your mark goes on our docket, and we will alert you to any deadlines you need to meet to maintain your registration.
- Additionally, we provide you with a consultation on how to properly use the mark in commerce.
- If the PTO raises any objections to your application, this package includes our response. Since the PTO’s objections can be complex, this option often saves clients a significant amount of money.
Breadown of Costs:
The search report costs
approximately $1,000
The filing fee is
approximately $300.00 per class
(add on an additional $300 for each additional class)
Our legal fees are
approximately $4,550
These costs change over time and depend on the type of filing you need.
Not Included:
Everything is included up until registration of your trademark, no matter how significant and numerous the PTO objections may be.