I am considering starting a brand where I would like to hold events and sell merchandise (t-shirts, sweatshirts, journals, pens, pencils, keychains, etc.). I am interested in trademarking the brand name, as well as, the logo.
The application fee paid to the United States Patent and Trademark Office ("USPTO") varies from $225 to $375 depending on the type of filing and how it is made. I have attached a link to the USPTO's Fee Schedule.
The fees I refer to are only the initial filing fees. You may have additional fees paid to the USPTO if, as it seems, the product or service is not yet in use in interstate commerce. If the trademark is granted, you would then have to file a statement of use and pay the appropriate fee.
This, of course, does not include attorneys' fees and costs if you intend to use an attorney. You should talk with a handful of trademark attorneys who will give you their fee schedule as well.
I have also attached a link to the USPTO's Trademark Basics website which will give you a general description of trademarks and how the process works.
The above answer should not be considered and does not constitute legal advice. You should not rely on any of this advice because each case is fact specific and could be subject to different local, state, and federal laws. No attorney-client relationship exists based on this response.
I recommend that you speak with an experienced business and intellectual property attorney to devise a strategy for creating your business and developing your brand. In the U.S., trademark rights accrue from use of a mark in commerce. If you have not yet started using your brand, you can either: (1) file an intent-to-use application; or (2) delay applying to register your brand until after you get the business up and running. Before you adopt your new brand name, I would recommend obtaining a clearance analysis from an attorney, which will substantially reduce the risk that your mark will be refused registration or, worse yet, be the subject of a trademark infringement suit. As to your questions regarding fees and the registration timeline, there are a variety of factors that can affect the response to each question. Thus, it is something you should discuss with your own attorney.
Best of Luck!
The first step is a screening search. Once that is evaluated, you should apply; but, having great I.P. counsel is a crucial factor.
The first step in the process is checking to make sure that the mark you intend to use is available. This is not like checking to see if a domain name is free by looking for an exact match and then just changing a letter if it's already taken. Trademarks protect confusingly similar marks in related areas of commerce, so you'll need to to a proper trademark clearance. In most cases that will mean either engaging an attorney or taking your chances that the mark will be refused due to a likelihood of confusion with an existing registration. This isn't always the case, and sometimes you can do this yourself quite easily, but it is advisable to properly research the mark's availability before building your brand around it. This process is pretty quick and shouldn't take long to yield results.
The actual application process is also fairly quick. Provided, of course, that you have all of the necessary information and documents (specifically a good specimen of the mark as it is used in commerce). The registration fees range from $225 to $325 (unless you file the old fashioned way and do it on paper, then it costs $375). That fee is charged per class, so a mark that will be used for events as well as merchandise will probably be registered in at least two classes, maybe more depending on the range of merchandise offered. Depending on the diligence and/or availability of your attorney this can take anywhere from an afternoon to several weeks. Legal fees will be charged in addition to the USPTO filing fees, and those range anywhere from a few hundred dollars to several thousand.
It will take about 3.5 months for the application to get assigned to an examiner. That's just the current wait-time, but it can fluctuate from 2.5 to 3.5 months.
The examiner usually has an initial response within a day or two. If they give the thumbs up, your application will be published for opposition. If nobody opposes the registration then the mark will be registered. This process takes a few months.
If the examining attorney issues an initial refusal, well, that changes everything and you'll be back to working with your attorney to respond to the office action and make the necessary amendments, changes, and arguments in favor of registration. If you go with a low-cost trademark service you'll probably start paying more legal fees at this point.
All in all, expect it to take up to a year. If it happens faster then you'll be pleasantly surprised.
That's terrific. The first step in protecting your brand and logo is to conduct a trademark clearance search and provide you with an opinion from an experienced Trademark Attorney that the mark is available for your use and registration. The next step is filing the name and the logo for registration in the US Patent and Trademark Office, as long as you have a bona fide intent to use the mark in interstate commerce, presumably in the next 1-4 years. Once the applications are filed, they will be picked up by the Trademark Attorney at the USPTO and an Office Action will issue, where the Examiner will approve the application for publication, or make certain refusals based on formal corrections to the application that need to be made, such as disclaimer of generic or descriptive parts of the mark, or the Examiner may refuse registration over some oher registration or for other grounds such as descriptiveness.. Your attorney will report the Official Action to you and recommend a response. Once the Examining Attorney approves the registration, it will be published for opposition by anyone who believes would be harmed by your registration. If no oppositions are filed a Notice of Allowance will issue and you will need to file a declaration and specimen proving use of the mark in interstate commerce, or file for a 6 month extension to do so with the appropriate fee. Once the Statement of Use is filed and accepted, the Trademark Registration Certificate will issue.
I suggest that you contact an experienced Trademark/ IP attorney who can advise you in confidence about your options and potential costs. Many IP firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark IP attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
At this point you really need to have a proper clearance conducted and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NY secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Regards to a timeline, the search and clearance letter can be done quickly. We usually ask for about one week. once the application is filed it can take anywhere from 5 months to a year on average before the USPTO will issue a registration. One of the big benefits of have a professional clear the mark upfront is that you will have some confidence to move forward assuming the clearance comes out well instead of hoping the USPTO will approves the mark. While of course surprises happen, a good trademark lawyer will know 95% of the time what to expect and be prepared to deal with any possible office actions.
If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Trademarks identify the source of goods and services. Nothing is more important than making sure that the brand that you choose will not violate trademark rights held by others.
The process begins by determining the jurisdictions in which you will be operating your business. Trademark rights are national in scope. A U.S. trademark does not protect you in Canada, Mexico, Europe or Asia. You will need to obtain trademark rights in every country in which you may operate or find customers. Even if you intend initially to concentrate on the U.S., you will very soon deal with customers and events in Canada and other countries. If you operate a web-site, you will inevitably reach people worldwide. Thus, it is no longer enough to "clear" your trademark in the U.S.; rather, you need to know that you can use it in every country in which you reasonably expect to operate.
Once you decide on the geographical issues, you need to retain IP counsel to conduct a comprehensive trademark search. The cost depends on the nature of the trademarks that you want to get, the geographic scope of the searches, and the nature of the goods and services that you may sell or market under the brand. We use an international classification system whereby goods and services are categorized by class (for example, class 41 constitutes educational and entertainment services, class 25 constitutes clothing, and class 9 covers printed publications, CD's DVD's, downloadable software etc). You attorney needs to pay attention while searching to trademarks that may exist for goods and services in all of the classes relevant to your business. In your case, you may be involved in four or more classes. The more classes involved, the more complex and expensive the search.
Also, the cost of the search depends on the nature of your proposed trademark. An unusually fanciful and unique proposed brand name will be easier to search than a difficult brand name. Be wary of lawyers who offer to do searches for flat fees----young, inexperienced lawyers may try that approach (and even some experienced lawyers who are struggling to get enough business), but in the real world such fee arrangements rarely work---it is impossible to reasonably predict how much attorney time will be required in advance of conducting the searches.
After conducting the searches, and assuming that your proposed brand and logo have been cleared, your attorney will then file a trademark application. Your will to file on an "intent to use" or actual use basis depending on whether you are already using the mark in your business. The filing of the application is the easy part. The real work is done before it is filed, including, for example, drafting descriptions of the goods and services that you will be providing. The filing fees generally are $275 per class (you will probably need at least four classes based on your question).
Once filed, an application is reviewed by a trademark examiner, who will probably issue one or more office actions which raise questions or objections to the proposed mark. Your attorney will need to respond with care to these office actions---sometimes this is expensive. When approved for issuance, the proposed mark is published so that members of the public have 30 days to file oppositions to registration. If no opposition, than a notice of allowance will issue. Then your attorney has to file a statement of use demonstrating actual use of the mark in commerce. Only after demonstrating use in commerce will the trademark finally be registered. The entire process takes between 12 and 24 months (usually--sometimes faster). On average total cost for getting a trademark will be between $7500 and $15,000, but it is not unusual in difficult cases where the examiner raises serious objections for the cost to be much higher. And this does not include costs of potential appeals if your application is ultimately rejected. In short, it takes more money and time than you may think.
I am not your lawyer and this is not intended to be legal advice on which you rely. My answer is merely intended to assist you in understanding some of the issues that you face so that you can make an intelligent choice when you hire legal counsel.
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