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Tag Archives: USPTO

Should You Register Your Trademark?

29 Monday Jan 2018

Posted by Kenan Farrell in Intellectual Property, Trademark

≈ 1 Comment

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Application Filing Fee, Clearance Search, Patent, Thompson CompuMark, Trademark, U.S. Patent and Trademark Office, USPTO

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.

USPTO upgrading website to https for user privacy

11 Thursday Aug 2016

Posted by Kenan Farrell in Intellectual Property, Patent, Trademark

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USPTO

On August 12, 2016, the informational web pages currently found at http://www.uspto.gov will be moved to https://www.uspto.gov. The USPTO has decided to finally use HTTPS (Hypertext Transfer Protocol Secure), currently the strongest privacy protection available for public web connections.

Those accessing web pages formerly found at http://www.uspto.gov will automatically be redirected to the pages’ new https location.

Screen Shot 2016-08-11 at 8.50.31 AM

Five largest global trademark offices join forces as TM5, create icons

18 Wednesday May 2016

Posted by Kenan Farrell in Federal Initiatives, Intellectual Property, Trademark

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TM5, USPTO

The five “biggest” (their term, not mine) trademark offices in the world have got together to form the TM5, an international framework for…creating silly icons. As a display of their collective might and unparalleled joint capabilities, the TM5 has created and adopted a set of “Common Status Descriptors,” a uniform set of icons to visually depict the trademark application process. Because actual words like Registered, Awaiting Examination and Expired were just too difficult for trademark practitioners to understand…

In addition to the United States Patent and Trademark Office, the other members of the TM5 are the trademark offices of Japan, Korea, China and the EU.

Screen Shot 2016-05-18 at 8.48.13 AM

The USPTO has already begun using the new icons. Here’s an example in practice on the USPTO website:

Screen Shot 2016-05-18 at 8.45.57 AM

Without a green circled ribbon, how did we ever ascertain that a trademark was registered? Go TM5!

Stories from the Week that Was – 4/8/12-4/14/12

14 Saturday Apr 2012

Posted by Kenan Farrell in Federal Initiatives, Intellectual Property, Legislation, Social Media, Trademark

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Amazon, Facebook, Instagram, JOBS Act, USPTO

Stories from the Week that Was – 4/8/12-4/14/12

President Obama Signs Into Law The Jumpstart Our Business Startups Act

Amazon will now buy your old CDs

Maryland becomes first state to ban employers from asking for social media passwords

Warning from the USPTO Concerning Unofficial Trademark Solicitations

U.S. sees warmest March in recorded history, NOAA reports

SF Students Suspended & Barred From Walking At Graduation Because They Joked About Teachers On A Blog

Facebook To Acquire Instagram For $1 Billion

“Relying on the government to protect your privacy is like asking a peeping tom to install your window blinds.” – John Perry Barlow

301,786 New Trademark Applications Filed in 2011

06 Friday Jan 2012

Posted by Kenan Farrell in Intellectual Property, Trademark

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USPTO

It’s getting tougher every day to select and protect a good new trademark. 2011 was a bumper year for trademark applications, with new filings up 6.6% over 2010. Check out the data below and call your trademark attorney before another 300K+ applications jump in line ahead of yours.

New U.S. Trademark Applications/Year

2011:  301,786
2010:  283,121
2009:  268,936
2008:  294,159
2007:  306,510
2006:  280,712

Stories from the Week that Was – 12/18-12/25/11

26 Monday Dec 2011

Posted by Kenan Farrell in Copyright, Federal Initiatives, Intellectual Property, Legislation, Privacy, Social Media

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Facebook, SOPA, USPTO

Stories from the Week that Was – 12/18-12/25/11

Dear Internet: It’s No Longer OK to Not Know How Congress Works

USPTO gets a new website

In the eyes of the law, are we all public figures on Facebook?

Don’t Break the Internet

“The intellectual property situation is bad and getting worse. To be a programmer, it requires that you understand as much law as you do technology.” – Eric Allman

USPTO releases 2011 Performance and Accountability Report

02 Friday Dec 2011

Posted by Kenan Farrell in Federal Initiatives, Intellectual Property

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USPTO

The United States Patent and Trademark Office has released its annual Performance and Accountability Report for fiscal year 2011. Full text below.

View this document on Scribd

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