Should You Register Your Trademark?


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Businesses often inquire whether it’s in their best interest to register their trademarks with the U.S. Patent and Trademark Office (“USPTO”).

The traditional short answer is: “Yes, if at all possible, you should register your trademarks!” This advice has been widely echoed by qualified intellectual property attorneys.

However, the reality of this economy is that small businesses, non-profits and individuals aren’t able to do everything a lawyer says they SHOULD do.  In Oregon and abroad, the bottom line counts now more than ever.  Thousands spent on obtaining a trademark registration are thousands not spent on other aspects of your business, like R&D, Marketing or Payroll.  As such, I often find it helpful to discuss with clients not only what they SHOULD do, but what they CAN do and what they MUST do.

trademark-symbolThe purpose of this post is to give you additional financial information with which you can decide whether to register your trademarks. Some lawyers will tell you it’s “expensive.”  The same lawyers might tell other clients that it’s “not expensive.”  I’ll lay out some real numbers that you can actually put into your budget.

First, keep in mind that registration of  trademarks is not required. Common law rights arise naturally from actual use of a trademark. Generally, the first entity to either use a trademark in commerce or file an intent to use application with the USPTO has the ultimate right to use and registration. However, filing for and receiving a federal trademark registration on the Principal Register provides several advantages:

  • constructive notice to the public of the registrant’s claim of ownership of the mark;
  • a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Optimally, all trademark owners who consider their trademark a valuable business asset (…and if not, why continue using the mark?) would like to obtain these advantages.  But registration is not free.  Here are some of the likely fees (based on the USPTO’s current Fee Schedule, last revised 1/16/18) that you will face before and during the registration procedure:

Clearance Search – Before adopting and using a trademark, it’s advised that a trademark clearance search be performed to determine the availability of the trademark. This will help determine whether there is another user already using the trademark, i.e. having superior rights in the trademark. By performing an initial trademark clearance search, a business can avoid incurring liability for trademark infringement and avoid investing resources in a trademark which could be unusable because it infringes another’s trademark rights. Expect the clearance search to cost $200-400.

A commercial research service like Thomson CompuMark, which conducts the actual search on its many databases, will cost around $700. Add attorney time to review and report on the results.

Application Filing Fee – The official filing fee is $275-$325 per trademark. Your  attorney will charge a fee for the application preparation and filing.

Filing an Amendment to Allege Use/Statement of Use $100. Both the Amendment to Allege Use and Statement of Use serve a similar function…they alert the USPTO that you are now using the trademark in commerce. This is important for intent-to-use applications where a trademark application is filed prior to actual use because registration cannot be obtained until the trademark has been used in commerce. Your attorney will spend time gathering specimens, and preparing and filing the necessary documents.

Extension of Time for Filing a Statement of Use – $150. It is possible to obtain up to six (6) extensions of time to file a Statement of Use. Each extension is for six (6) months, up to a total of thirty-six (36) months.  Of course, each extension must be accompanied by a fee. There will also be some nominal attorney time to prepare the extension.

Response to Office Action – Office actions are letters from the USPTO that set forth the legal status of a trademark application. Typically, the examining attorney will set forth specific requirements that the applicant must meet before an application can be approved for publication. Believe it or not, there is no filing fee for a Response to Office Action. However, a majority of your attorney’s time in the application procedure will likely be spent reviewing and responding to office actions.

Looking into the future, you’ll want to keep in mind the renewal costs which will be paid after five (5) years. Expect to pay $500+ for each class of goods and services that your trademark protects. For example, if a band wants to protect its band name for both “musical services” and “t-shirts,”  it will be paying filing fees for two separate classes of protection. This applies to filing fees also.

Notwithstanding the renewal costs, and assuming that no extensions, etc. are required, you’re looking at approximately $1000 just in filing fees for one trademark protecting one class of goods and services. On top of these established PTO fees, you’ll be paying your trademark attorney for each document prepared or filing made. Therefore, choosing a trademark attorney who provides excellent service at a lower cost can greatly enhance your bottom line. Also, these are just some of the more common fees you will face in registering your trademark…there may be additional filings/costs associated with a trademark registration, depending on the specifics of your trademark and the strategy of your attorney.

So, should you register your trademark??? The traditional answer still rings true…if fiscally possible, do it. Trademarks are valuable business assets that are typically far greater in value than any costs associated with registration. Always bear in mind that economies rise and fall, but trademark rights can continue indefinitely. Unfortunately, that means that spending less today to protect your trademark rights may allow another party to intervene and lock up important trademark rights for the future.  Also, be sure to consider how licensing opportunities might be affected should you not register your trademarks.

Final practical note: Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. It’s free and reinforces good habits among those wearing the “marketing” hat.

Seed companies in trademark dispute over MINICLOVER vs. MICROCLOVER for clover seeds


The plaintiff in this declaratory judgment action,, Inc., seeks a declaration that its MINICLOVER trademark has not infringed the defendant’s rights in its MICROCLOVER® branded clover seed.

Screen Shot 2018-01-30 at 12.57.33 PM.pngScreen Shot 2018-01-30 at 12.56.39 PM.png, Inc. v. DLF Pickseed USA, Inc.

Court Case Number:  6:18-cv-00117
File Date: Monday, January 22, 2018
Plaintiff:, Inc.
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: DLF Pickseed USA, Inc.
Causes: Unenforceability of Trademark, Non-infringement of Trademark
Court: District of Oregon
Judge: Ann L. Aiken


Oregon Trademark Registration


Clients often inquire whether they should register their trademarks at the State or Federal level. Starting with the assumption that even small local businesses may encounter a challenge to their trademark in the future, I generally try to impress upon them the advantages of federal registration. After all, many of my clients end up being successful and seek to expand outside of Oregon’s borders. With the exponential growth of “e-commerce,” the Internet is providing opportunities for national and global expansion, even for the smallest Oregon businesses.  It is therefore important for businesses of all types and sizes to choose and protect their trademarks with care…often this can mean protection at BOTH the State and Federal level.

Here’s a quick primer on registration of a trademark in Oregon:

Trademarks are registered with the Oregon Secretary of State. There is a non-refundable fee of $50 for filing a trademark application, and the registration must be renewed every 5 years.


Registration of a trademark with the Oregon Secretary of State creates a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in Oregon commerce in connection with the goods or services described in the application. (A federal registration would protect your trademark in all states where it is used.)

The Oregon Trademark Act (ORS 647) protects words, names, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Oregon, but not against corporate, fictitious, or assumed names.

Oregon trademark rights arise from actual use of the mark in commerce, i.e. there are no “intent-to-use” applications.

A mark cannot be registered until it has been used in Oregon. Oregon defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, distributed, or rendered in Oregon.

So what are some of the main benefits of state registration over federal registration?  It’s cheaper (State – $50/class vs. Federal – $275/class) and quicker. I’ve seen turnaround of weeks, not months or years as with the USPTO. State registration can be a good remedy for a purely local entity. State registration provides an increased level of trademark protection…at least you can claim protection on your “home turf.”  However, in the long run, I’d recommend that any entity which anticipates expanding outside of Oregon, particularly via Internet “e-commerce,” should seek federal trademark registration to best protect their valuable trademark rights.

I look forward to hearing from proponents of State registration…how has an Oregon State registration uniquely benefitted either you or your clients?

On Electric sues OEG for trademark infringement, unfair competition


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The plaintiff in this trademark lawsuit is an Oregon-based business “offering a full range of electrical services, including but not limited to residential, commercial and industrial services along with a comprehensive service department.” Plaintiff has used an ON ELECTRIC trademark since January 2015 in connection with its electrical services.

The defendant, OEG, allegedly began using an ON ELECTRIC trademark in connection with electrical services in August 2015. OEG apparently used to stand for “Oregon Electric Group” but it switched at some point to “On Electric Group.”

Both parties operate in Portland, Oregon and the surrounding areas. The complaint (below) alleges numerous instances of actual confusion among suppliers, advertisers, customers and others.

On Electric, LLC v. On Electric Group, Inc.

Court Case Number:  3:17-cv-01871-HZ
File Date: Tuesday, November 21, 2017
Plaintiff: On Electric, LLC
Plaintiff Counsel: David S. Aman of Aman Law, LLC
Defendant: On Electric Group, Inc.
Causes: Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Marco A. Hernandez


Dr. Seuss Enterprises accused by author of stealing Daisy-Head Mayzie



This rather lengthy, interesting, and unorthodox copyright complaint, filed by a pro se author, accuses Dr. Seuss Enterprises of stealing the character “Daisy-Head Mayzie” from his children’s story, “The Pains of Being Pure at Heart.”

Daisy-Head Mayzie is about a girl who suddenly sprouts a daisy from her head. Plaintiff’s story is about Lukus Loo, a boy(?) seemingly missing the top of his head, sometimes covering it with a crown, sometimes with three flowers. You be the judge after reading the Complaint (below). The Plaintiff’s itemized list of “plagiarized elements” begins on page 31 of the Complaint.

The Plaintiff has a long history with the Seuss estate, including several prior lawsuits, including most recently the Federal Court of Canada, which dismissed its suit on jurisdictional grounds in April 2017. The prior history, at least the Plaintiff’s side, is set forth in detail in the Complaint. The Dr. Seuss estate even had the Plaintiff arrested for extortion in 2003.

Quotes like these always make pro se lawsuits an interesting read:

In addition to the Complaint, the case also has some voluminous Exhibits which may merit further exploration by Dr. Seuss fans and historians.

Stay tuned for updates.

Steen v. Dr. Seuss Enterprises et al.

Court Case Number:  3:17-cv-01765-SB
File Date: Friday, November 3, 2017
Plaintiff: Charles Augustus Steen III
Plaintiff Counsel: Pro Se
Defendants: Dr. Seuss Enterprises L.P., Penguin Random House
Causes: Copyright Infringement,
Court: District of Oregon
Judge: Stacie F. Beckerman


Breach of Contract over Moisturizing Personal Lubricant Leads to Lawsuit


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The Plaintiff, a Eugene, Oregon-based manufacturer of natural and organic intimacy and feminine hygiene products, “brings this action because Defendants have conspired to sabotage [Plaintiff]’s distribution in Canada, and then to use [Plaintiff]’s proprietary, confidential business information and intellectual property to launch a brand of products nearly identical to those marketed and sold by [Plaintiff].”

Plaintiff sells moisturizing personal lubricant products under the brand names RESTORE, ALMOST NAKED and GUILTY PLEASURE.

The dispute arises from a contractual relationship gone bad. See the Complaint (below) for the details.

Good Clean Love, Inc. v. Aurium Pharma Inc. et al

Court Case Number: 6:17-cv-01712-JR
File Date: October 26, 2017
Plaintiff: Good Clean Love, Inc.
Plaintiff Counsel: David P. Cooper, Owen W. Dukelow, Desmond J. Kidney of Kolisch Hartwell, P.C.
Defendants: Aurium Pharma Inc., Rowland Global LLC, Edward Rowland
Causes: Trademark Infringement, False Designation of Origin, Breach of Contract, Intentional Interference with Economic Relations, Unlawful Business Practices, Unlawful Trade Practices, Breach of Good Faith and Fair Dealing, Breach of Fiduciary Duty, Professional Negligence
Court: District of Oregon
Judge: Jolie A. Russo


Unauthorized UtilitySport® Trailers Allegedly Sold in Oregon


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This lawsuit arises out of the manufacture, importation, offer for sale, sale, and distribution in the United States of unauthorized copies of UtilitySport® trailers by the Defendants.

The Plaintiff is a utility trailer kit manufacturer located in Grants Pass, Oregon. It owns federal trademark registrations for UtilityMate® and UtilitySport®.

In 2011, Plaintiff entered into a contract with the Defendants for the manufacture of trailers. The Defendants are now accused of manufacturing and selling trailers based on Plaintiff’s designs and using Plaintiff’s trademarks without permission and without compensating Plaintiff.

Trailers Intl LLC et al v. STC International (Shanghai) Co. Ltd. et al.

Court Case Number: 3:17-cv-01432-SI
File Date: Monday, September 11, 2017
Plaintiff: Trailers Intl LLC, Vincent L. Webb
Plaintiff Counsel: Stephen J. Joncus of Joncus Law LLC
Defendant: STC International (Shanghai) Co. Ltd., Rockford Commercial Warehouse, Inc., Power Equipment Direct Inc.
Cause: Copyright Infringement, Trademark Infringement, Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Michael H. Simon


Motion for Preliminary Injunction, Response Filed in Portland Heart Pizza Trademark Lawsuit


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Portland, Oregon’s Heart coffee roasters has filed a Motion for Preliminary Injunction in its trademark lawsuit against nearby Heart Pizza (read the original Complaint here).

We also now have a Response from Heart Pizza. There’s some good legal reading in the documents (below) but I’ve included a few highlights. I especially like Heart Pizza’s arguments around why keeping its name is in the public interest.

Public, now’s your chance to speak up…is it in your interest that Heart Pizza keep its name or should it pick a new one? Leave a comment below.

Motion for Preliminary Injunction:


Response to Motion for Preliminary Injunction:




Stay tuned for the Court’s ruling on the Plaintiff’s Motion for Preliminary Injunction.

Heart, LLC v. Heart Pizza, LLC

Court Case Number: 3:17-cv-01297-YY
File Date: Monday, August 21, 2017
Plaintiff: Heart, LLC
Plaintiff Counsel: Kenneth R. Davis II, Parna A. Mehrbani of LANE POWELL PC
Defendant: Heart Pizza, LLC, Micah Camden
Defendant Counsel: Steven T. Lovett, Nathan C. Brunette, Elliott J. Williams of STOEL RIVES LLP
Cause: Unfair Competition, Oregon Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Youlee Yim You

Motion for Preliminary Injunction:

Response to Motion for Preliminary Injunction:

Photographer sues Bend Real Estate Company for Copyright Infringement


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Here’s a single claim copyright infringement lawsuit involving a professional photographer and a Bend, Oregon real estate company that allegedly used one of his photographs on its website without permission.

Reed v. Alpine Real Estate LLC et al

Court Case Number: 6:17-cv-01396-TC
File Date: Wednesday, September 6, 2017
Plaintiff: Aaron C. Reed
Plaintiff Counsel:Mathew K. Higbee, Esq. of HIGBEE & ASSOCIATES
Defendant: Alpine Real Estate, LLC, Does 1-10
Cause: Copyright Infringement
Court: District of Oregon
Judge: Thomas M. Coffin


Photographer Files Copyright Lawsuit After Settlement Negotiations Break Down over Confidentiality Clause


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The Plaintiff in this copyright lawsuit is a professional photographer from Sammamish, Washington. He sells “limited edition luxury nature photography.” Pretty cool stuff, go check it out.

The Defendants are a real estate agency located in Portland, Oregon, who allegedly used one of Plaintiff’s photographs on their website without permission.

That’s all pretty standard stuff for a copyright lawsuit. We see those types of photography lawsuits regularly, since copyright infringement is strict liability, meaning liability doesn’t depend on actual negligence or intent to harm. Even the proposed settlement amount was reasonable by all accounts, just $1000 (statutory damages are $750 minimum). The more interesting part of this lawsuit may be the reason why the parties couldn’t amicably settle the dispute outside of court.

Settlement discussions apparently broke down over a confidentiality clause in the settlement agreement. Per the Complaint (below), “Defendants’ counsel did not wish to be personally bound by confidentiality ostensibly on account of an article that Defendants’ counsel intended to submit to California Lawyer magazine.” Defendants’ counsel also “apparently believed that amicable settlement was not prudent, as these types of cases ‘need more exposure.'”

Of course, we’re more than happy to give Oregon trademark and copyright cases tons of exposure here at the Oregon Intellectual Property Blog. Stay tuned for updates (and perhaps eventually a California Lawyer article with more detail).

Reed v. Ezelle Investment Properties Inc. et al.

Court Case Number: 3:17-cv-01364-BR
File Date: Thursday, August 31, 2017
Plaintiff: Aaron C. Reed
Plaintiff Counsel:Mathew K. Higbee, Esq. of HIGBEE & ASSOCIATES
Defendant: Ezelle Investment Properties Inc. d/b/a, Glenn D. Ezelle Jr., Does 1-10
Cause: Copyright Infringement
Court: District of Oregon
Judge: Anna J. Brown