SEARCH

SEARCH

FILING

FILING

EXAMINATION

EXAMINATION

PUBLICATION

PUBLICATION

ALLOWANCE

ALLOWANCE

STATEMENT OF USE

STATEMENT OF USE

REGISTRATION

REGISTRATION

POST-REGISTRATION

POST-REGISTRATION

FOREIGN TRADEMARK REGISTRATION

FOREIGN TRADEMARK REGISTRATION

ADDITIONAL SERVICES

ADDITIONAL SERVICES

OVERVIEW OF THE PROCESS

A trademark application must go through a number of stages before the USPTO will issue a Certificate of Registration. This document provides you with a basic overview of those stages and the costs involved, including the initial application and examination procedures, as well as post-registration maintenance requirements. There are many nuances and strategy considerations that we will counsel on during this process. Some of the following costs are dependent on the number of Classes in an application. Trademark offices throughout the world use a unified classification system for categorizing products and services. For example, clothing falls into Class 25, while professional business consulting services fall into Class 35. We will advise you on the correct classification of products and services.

USE-BASED APPLICATIONS

You may file a Use-Based application only if you are using the mark on the products or services at the time of application.

INTENT-TO-USE APPLICATIONS

You may file an Intent-To-Use application if you are not yet using the mark on the products or services listed in the application, but you have a bona fide intent to make use in the future.

SEARCH

Before an application is filed, or a mark is put into use, it is wise to investigate whether any similar marks exist on the USPTO database or are in use in the real world. These marks may impede an application from maturing to registration, or may pose a risk to using the mark in the United States.

The recommended search depends in part on the nature of the mark and how much risk is willing to be accepted.

IN-HOUSE

A search is performed for identical and similar marks in the USPTO database and in internet search results, and a short email summary of the results is provided.

PROFESSIONAL FEES: $650
SEARCH PROVIDER FEES: N/A

 

COMPREHENSIVE​

We commission a search report from a search provider. The report includes a search of the USPTO database, U.S. state registrations, domain names, business names, and internet search results. We provide a written opinion of search results. Search reports can be tailored to the client’s industry.

PROFESSIONAL FEES: Hourly
SEARCH PROVIDER FEES: $700 and up depending on scope

FILING

After developing a thorough understanding of your business, we will craft a description of the products and/or services that will be provided under the trademark. We will then file the application with the USPTO. Our Professional Fees below cover the process from application through registration, excluding costs related to (1) Office Actions and appeals, (2) Statements of Use/Requests for Extension of Time for Intent-To-Use applications, and (3) adversarial proceedings.

PROFESSIONAL FEES: $1,250
USPTO FEES: $350 per class

TOTAL FEES:
one class $1,600
two classes $1,950
three classes $2,300

Fees are per application.
Some applications may incur a lower USPTO fee of $250 per Class.

EXAMINATION

Usually within three to four months of the application filing date, an Examining Attorney at the USPTO will examine the application. Ideally, the application will proceed directly to Publication. In some cases, however, the Examining Attorney may issue an Office Action detailing the reasons he or she believes the application should not proceed. If so, we will need to respond to the Office Action in order to move the application forward. A response to an Office Action is normally due six months from the date the Office Action is issued.

If our response to an Office Action is unsuccessful, we may file a Request for Reconsideration and/or an Appeal to the Trademark Trial & Appeal Board.

REVIEW, REPORT & SUMMARIZE OFFICE ACTION
NON-SUBSTANTIVE OFFICE ACTION: $225
SUBSTANTIVE OFFICE ACTION: $400

PREPARE, FILE & REPORT OFFICE ACTION RESPONSES & REQUESTS FOR RECONSIDERATION
Hourly (minimum $200)

APPEALS TO THE TTAB
NOTICE OF APPEAL: $250plus USPTO fee
PREPARE AND FILE APPEAL BRIEF: Hourly

PUBLICATION

After the USPTO has approved the application, it will publish the application in the Official Gazette. From that date, any party who believes it may be damaged by registration of the mark will have 30 days in which to notify the USPTO that they oppose the registration of the mark, or to request additional time to oppose. This 30-day window is known as the opposition period. We will monitor activity during the opposition period and will provide notification in the event a third party has opposed the application. If no opposition is filed, the application will enter the next stage of the application process.

NOTICE OF PUBLICATION

ANALYZE AND DOCKET NOTICE OF PUBLICATION:  No additional fee.

ALLOWANCE

(Intent-To-Use applications only)

Once an Intent-to-Use application has survived the Opposition Period, the USPTO will issue a Notice of Allowance. Within six months from the date of the Notice of Allowance, either a Statement of Use or a request for a six-month extension to submit a Statement of Use must be filed.

NOTICE OF ALLOWANCE

ANALYZE DOCKET, AND REPORT NOTICE OF ALLOWANCE: No additional fee.

STATEMENT OF USE

(Intent-To-Use applications only)

Within six months of the USPTO’s issuance of a Notice of Allowance, a Statement of Use or a six-month extension of time to submit the Statement of Use must be filed. A Statement of Use is a sworn statement in which the declarant attests to a mark’s use in commerce in connection with the products and/or services listed in the application. If at this stage use of a mark in commerce has not commenced, up to five six-month extensions of time in which to make such use and file a Statement of Use may be requested. If a Statement of Use cannot be filed before all available extensions are exhausted, the application will be abandoned. We will closely advise on whether to file a Statement of Use or request an extension.

STATEMENT OF USE
PROFESSIONAL FEES: $400
USPTO FEES: $100 per class

EXTENSION OF TIME TO FILE STATEMENT OF USE
PROFESSIONAL FEES: $250
USPTO FEES: $125 per class

REGISTRATION

Congratulations! The USPTO has issued a Certificate of Registration. Now that the mark is registered, it will enjoy the many benefits of federal registration, including:

  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the products/services listed in the registration.
  • The ability to bring an action concerning the mark in federal court.
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign products.
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

 Federal registration may also provide a stronger position with respect to:

  • Domain name disputes.
  • Online trademark disputes.
  • Taking over infringing social media user names.
  • Registering your brand with Amazon Brand Registry.
  • Policing online marketplaces for infringing activity.

The key to maintaining and accruing trademark rights in the United States is to continue to use the mark in connection with the goods/services listed in the registration and enforce your rights when necessary. Please contact us to discuss implementing a trademark watch service and proper enforcement strategy. You should also keep us informed of any planned expansion of the goods/services offered under the registered mark.

ANALYZE, DOCKET, AND REPORT CERTIFICATE OF REGISTRATION: No additional fee.

POST-REGISTRATION

In order to maintain a trademark registration, certain filings must be made with the USPTO. The first, a Declaration of Continued Use, is due between the fifth and sixth year from the date of registration. This filing is often combined with a Declaration of Incontestability.

The next mandatory filing, Renewal, is due between every ninth and tenth year from the registration date, and is accompanied by another Declaration of Continued Use.

DECLARATION OF CONTINUED USE
PROFESSIONAL FEES: $650
USPTO FEES: $225 per class

COMBINED DECLARATIONS OF CONTINUED USE AND INCONTESTABILITY
PROFESSIONAL FEES: $650
USPTO FEES: $425 per class

RENEWAL
PROFESSIONAL FEES: $650
USPTO FEES: $525 per class

DELETING GOODS, SERVICES, AND/OR CLASSES FROM A REGISTRATION
IN RESPONSE TO A POST-REGISTRATION ACTION OR AUDIT
PROFESSIONAL FEES: Hourly
USPTO FEES: $250 per class



FOREIGN TRADEMARK REGISTRATION

While business today is more often than not a global proposition, trademark protection is territorial in nature. We begin discussion of foreign trademark protection early in the attorney-client relationship so that our clients can plan ahead and budget appropriately. We will advise on searching and available methods for filing foreign trademark applications. Individual strategic considerations will determine whether a foreign application should be filed directly with local counsel or through the Madrid Protocol “international registration” system.

PREPARING AND FILING VIA MADRID PROTOCOL
PROFESSIONAL FEES: $650
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

EXTENDING PROTECTION TO ADDITIONAL TERRITORIES (“Subsequent Designations”)
PROFESSIONAL FEES: $450
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

PREPARING AND FILING DIRECTLY VIA LOCAL COUNSEL
PROFESSIONAL FEES: $600
LOCAL COUNSEL PROFESSIONAL FEES: Dependent Upon Territories. 
OFFICIAL FEES: Dependent Upon Territories and Number of Classes. 

REGISTRATION MAINTENANCE/RENEWAL
RENEWAL INSTRUCTIONS TO LOCAL COUNSEL: $600 per territory plus local counsel and official fees
RENEWAL VIA MADRID PROTOCOL: $700 plus official fees

Additional tasks associated with Madrid Protocol applications and direct filings (e.g. analyzing and reporting official actions, reporting publication, corresponding with local counsel, etc.) will be billed hourly.

ADDITIONAL SERVICES

RECORD ASSIGNMENTS, CHANGES OF NAME: $350 plus USPTO fees

FILE CHANGE OF OWNER’S ADDRESS
REQUEST: $225

PETITIONS TO DIRECTOR: Quoted on a case-by-case basis plus USPTO fees

REQUEST TO ABANDON APPLICATION/SURRENDER REGISTRATION: $150

REQUEST TO DELETE 1(B) BASIS: $225

OPPOSITIONS & CANCELLATIONS
REQUEST EXTENSION OF TIME TO OPPOSE: $250 plus USPTO fees

OPPOSITION: Hourly plus USPTO fees

CANCELLATION: Hourly plus USPTO fees

REEXAMINATION & EXPUNGEMENT PROCEEDINGS
REEXAMINATION: Hourly plus USPTO fees

EXPUNGEMENT: Hourly plus USPTO fees

APPLICATIONS TAKEN OVER IN PROGRESS
FILE ATTORNEY APPOINTMENT FORM: No charge

REPORT NOTICE PUBLICATION: $225

REPORT NOTICE OF ALLOWANCE: $225

REPORT CERTIFICATE OF REGISTRATION: $225

APPLICATION FOR STATE TRADEMARK REGISTRATION: $500 plus official fees

 

SEARCH

Before an application is filed, or a mark is put into use, it is wise to investigate whether any similar marks exist on the USPTO database or are in use in the real world. These marks may impede an application from maturing to registration, or may pose a risk to using the mark in the United States. The recommended search depends in part on the nature of the mark and how much risk is willing to be accepted.

IN-HOUSE

A search is performed for identical and similar marks in the USPTO database and in internet search results, and a short email summary of the results is provided

PROFESSIONAL Fees: $650
Search Provider Fees: n/a

COMPREHENSIVE

We commission a search report from a search provider. The report includes a search of the USPTO database, U.S. state registrations, domain names, business names, and internet search results. We provide a written opinion of search results. Search reports can be tailored to the client’s industry.

PROFESSIONAL FEES: Hourly
SEARCH PROVIDER FEES: $700 and up depending on scope

FILING

After developing a thorough understanding of your business, we will craft a description of the products and/or services that will be provided under the trademark. We will then file the application with the USPTO.

Our Professional Fees below cover the process from application through registration, excluding costs relatedto (1) Office Actions and appeals, (2) Statements of Use/Requests for Extension of Time for Intent-To-Use applications, and (3) adversarial proceedings.

PROFESSIONAL FEES: $1,250
USPTO FEES: $350 per class

TOTAL FEES:
one class $1,600
two classes $1,950
three classes $2,300

Fees are per application. Some applications may incur a lower USPTO fee of $250 per Class.

EXAMINATION

Usually within three to four months of the application filing date, an Examining Attorney at the USPTO will examine the application. Ideally, the application will proceed directly to Publication. In some cases, however, the Examining Attorney may issue an Office Action detailing the reasons he or she believes the application should not proceed. If so, we will need to respond to the Office Action in order to move the application forward. A response to an Office Action is normally due six months from the date the Office Action is issued. If our response to an Office Action is unsuccessful, we may file a Request for Reconsideration and/or an Appeal to the Trademark Trial & Appeal Board.

REVIEW, REPORT & SUMMARIZE OFFICE ACTION

NON-SUBSTANTIVE OFFICE ACTION: $225
SUBSTANTIVE OFFICE ACTION: $400

PREPARE, FILE & REPORT OFFICE ACTION RESPONSES & REQUESTS FOR RECONSIDERATION

Hourly (minimum $200)

APPEALS TO THE TTAB

NOTICE OF APPEAL: $250 plus USPTO fee
PREPARE AND FILE APPEAL BRIEF: Hourly

PUBLICATION

After the USPTO has approved the application, it will publish the application in the Official Gazette. From that date, any party who believes it may be damaged by registration of the mark will have 30 days in which to notify the USPTO that they oppose the registration of the mark, or to request additional time to oppose. This 30-day window is known as the opposition period. We will monitor activity during the opposition period and will provide notification in the event a third party has opposed the application. If no opposition is filed, the application will enter the next stage of the application process.

NOTICE OF PUBLICATION

ANALYZE AND DOCKET NOTICE OF PUBLICATION: No additional fee.

ALLOWANCE

(Intent-To-Use applications only) Once an Intent-to-Use application has survived the Opposition Period, the USPTO will issue a Notice of Allowance. Within six months from the date of the Notice of Allowance, either a Statement of Use or a request for a six-month extension to submit a Statement of Use must be filed.

NOTICE OF ALLOWANCE

ANALYZE AND DOCKET NOTICE OF PUBLICATION: No additional fee.

STATEMENT OF USE

(Intent-To-Use applications only) Within six months of the USPTO’s issuance of a Notice of Allowance, a Statement of Use or a six-month extension of time to submit the Statement of Use must be filed. A Statement of Use is a sworn statement in which the declarant attests to a mark’s use in commerce in connection with the products and/or services listed in the application. If at this stage use of a mark in commerce has not commenced, up to five six-month extensions of time in which to make such use and file a Statement of Use may be requested. If a Statement of Use cannot be filed before all available extensions are exhausted, the application will be abandoned. We will closely advise on whether to file a Statement of Use or request an extension.

STATEMENT OF USE

PROFESSIONAL FEES: $400
USPTO FEES: $100 per class

EXTENSION OF TIME TO FILE STATEMENT OF USE

PROFESSIONAL FEES: $250
USPTO FEES: $125 per class

REGISTRATION

Congratulations! The USPTO has issued a Certificate of Registration. Now that the mark is registered, it will enjoy the many benefits of federal registration, including:

  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the products/services listed in the registration.
  • The ability to bring an action concerning the mark in federal court.
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign products.
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

 Federal registration may also provide a stronger position with respect to:

  • Domain name disputes.
  • Online trademark disputes.
  • Taking over infringing social media user names.
  • Registering your brand with Amazon Brand Registry.
  • Policing online marketplaces for infringing activity.

The key to maintaining and accruing trademark rights in the United States is to continue to use the mark in connection with the goods/services listed in the registration and enforce your rights when necessary. Please contact us to discuss implementing a trademark watch service and proper enforcement strategy. You should also keep us informed of any planned expansion of the goods/services offered under the registered mark.

ANALYZE, DOCKET, AND REPORT CERTIFICATION OF REGISTRATION: No additional fee.

POST-REGISTRATION

In order to maintain a trademark registration, certain filings must be made with the USPTO. The first, a Declaration of Continued Use, is due between the fifth and sixth year from the date of registration. This filing is often combined with a Declaration of Incontestability. The next mandatory filing, Renewal, is due between every ninth and tenth year from the registration date, and is accompanied by another Declaration of Continued Use.

DECLARATION OF CONTINUED USE

PROFESSIONAL FEES: $650
USPTO FEES: $225 per class

COMBINED DECLARATIONS OF CONTINUED USE AND INCONTESTIBILITY

PROFESSIONAL FEES: $650
USPTO FEES: $425 per class

RENEWAL

PROFESSIONAL FEES: $650
USPTO FEES: $525 per class

DELETING GOODS, SERVICES, AND/OR CLASSES FROM A REGISTRATION IN RESPONSE TO A POST-REGISTRATION ACTION OR AUDIT

PROFESSIONAL FEES: Hourly
USPTO FEES: $250 per class

FOREIGN TRADEMARK REGISTRATION

While business today is more often than not a global proposition, trademark protection is territorial in nature. We begin discussion of foreign trademark protection early in the attorney-client relationship so that our clients can plan ahead and budget appropriately. We will advise on searching and available methods for filing foreign trademark applications. Individual strategic considerations will determine whether a foreign application should be filed directly with local counsel or through the Madrid Protocol “international registration” system.

PREPARING AND FILING VIA MADRID PROTOCOL

PROFESSIONAL FEES: $650
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

EXTENDING PROTECTION TO ADDITIONAL TERRITORIES ("Subsequent Designations")

PROFESSIONAL FEES: $450
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

PREPARING AND FILING DIRECTLY VIA LOCAL COUNSEL

OUR PROFESSIONAL FEES: $600
LOCAL COUNSEL PROFESSIONAL FEES: Dependent Upon Territories.
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

REGISTRATION MAINTENANCE/RENEWAL

RENEWAL INSTRUCTIONS TO LOCAL COUNSEL: $600 per territory plus local counsel of choice fees
RENEWAL VIA MADRID PROTOCOL: $700 plus official fees
OFFICIAL FEES: Dependent Upon Territories and Number of Classes.

Additional tasks associated with Madrid Protocol applications and direct filings (e.g. analyzing and reporting official actions, reporting publication, corresponding with local counsel, etc.) will be billed hourly.

ADDITIONAL SERVICES

RECORD ASSIGNMENTS, CHANGES OF NAME: $350 plus USPTO fees

FILE CHANGE OF OWNER’S ADDRESS REQUEST: $125

PETITIONS TO DIRECTOR: Quoted on a case-by-case basis

REQUEST TO ABANDON APPLICATION/SURRENDER REGISTRATION: $225

REQUEST TO DELETE 1(B) BASIS: $225

OPPOSITIONS & CANCELLATIONS

REQUEST EXTENSION OF TIME TO OPPOSE: $250 plus USPTO fees

OPPOSITION: Hourly plus USPTO fees

CANCELLATION: Hourly plus USPTO fees

REEXAMINATION & EXPUNGEMENT PROCEEDINGS

REEXAMINATION: Hourly plus USPTO fees

EXPUNGEMENT: Hourly plus USPTO fees

APPLICATIONS TAKEN OVER IN PROGRESS

FILE ATTORNEY APPOINTMENT FORM: No charge

REPORT NOTICE OF PUBLICATION: $225

REPORT NOTICE OF ALLOWANCE: $225

REPORT CERTIFICATE OF REGISTRATION: $225

APPLICATION FOR STATE TRADEMARK REGISTRATION: $500 plus official fees