At The Law Office of Xavier Morales, we offer a comprehensive suite of trademark related legal consultation. Please review the pages below for specific information about our offerings, or give us a call if you need an immediate answer.
Once you have selected your new business name, product name, logo or slogan, it is critical to have a licensed trademark attorney conduct a Comprehensive Trademark Search for you. The purpose of the Comprehensive Trademark Search is to determine whether your name, logo or slogan is in fact available for you to use and to register as a trademark for your business.
You want to make sure that the name, logo or slogan that you have selected will not infringe upon anyone else’s trademark rights, so that you may protect yourself from lawsuits from other companies claiming trademark infringement. Our Comprehensive Trademark Search service will ensure that your name, logo or slogan is free and clear for you to use.
Our Comprehensive Trademark Search and Filing Package includes:
- Comprehensive federal trademark database search
- Comprehensive state trademark database search (all 50 states)
- Common law database search
- Internet database search
- Search report and written opinion letter prepared by me personally
- Results of the Trademark Search are available in 3-5 business days.
- Phone consultation with an attorney to discuss the search results
- Trademark Application prepared and filed by me personally
- Monitoring of your Trademark Application until it registers
|Government Filing Fee (per class)||$350|
|Attorney Search & Filing Fee||$995|
The Trademark Search Fees
The first step of the trademark process is conducting the trademark search, which will make sure that there are no conflicts with any other prior-existing trademarks or businesses. If you hire a trademark attorney to conduct the trademark search for you and provide you with a written legal opinion, you can expect to pay anywhere from $300 and up.
While there are some services out there that claim to provide a trademark search service for under $300, you should be very careful with such services because, as the old saying goes, “You get what you pay for.” The Trademark Search is usually the most important step in the trademark registration process, and that is not something you want to cut corners on, especially as a first time applicant.
You want to make sure the trademark search is comprehensive, and conducted by a licensed trademark attorney. This will ensure that you get the best possible legal advice on whether you should proceed with the name, logo or slogan that you have chosen, or whether you should change the name, logo or slogan due to a potential trademark conflict with someone else’s trademark.
The last thing you want to happen is to get sued for trademark infringement in federal court. Remember, it’s possible that someone else has already thought of the name, logo or slogan that you’re interested in (or something very similar to it), and it’s possible that they have already filed a trademark application for it as well. Be smart, and get the trademark search conducted by a professional trademark attorney.
The Trademark Application Fees
Of course, the trademark search costs only represent half of the answer to the question of “How much does it cost to trademark a name?” Once the trademark search has been conducted and no problems or issues have been found, the next step would be to prepare and file the trademark application. A licensed trademark attorney can charge anywhere from $200 and up for this service.
Additionally, upon filing your trademark application, the United States Patent and Trademark Office (USPTO) will charge you a government filing fee of at least $350 and sometimes more, depending on how the application is filed, and how many classes of goods/services are listed in the application. In most cases, the government filing fee is $350 per class of goods or services – each class after that will come with an additional fee.
And what are these “classes” of goods or services? The Trademark Office has 45 different classes of goods and services, which cover every type of business, ever type of service, and every type of product imaginable. For example, dietary supplement products are classified in Class 005; software products and classified in Class 009; jewelry products are classified in Class 014; clothing products are classified in Class 025; retail store services are classified in Class 035; financial services are classified in Class 036; plumbing services are classified in Class 037; and restaurant services are classified in Class 043.
So let’s say you own a restaurant with the name “BILLY BOB’S”, and let’s say you also want to start a clothing line with the same name as the restaurant. In that case, if you want federal trademark protection for the restaurant services class (which is Class 043) and the clothing products class (which is Class 025), you would have to pay a government filing fee of $550 for the two classes (since the standard fee is $350 per class).
Nevertheless, I should note that most businesses file their trademark application in just one class. Accordingly, the vast majority of trademark applicants simply pay the government filing fee of $350 for one class of goods or services. Pending your business, you may need multiple classes to fully protect your intellectual property, which will bring additional costs.
Trademark Maintenance Fees
Are there any other fees that can be expected throughout the trademark registration process? For certain trademark applications, the U.S. Trademark Office may require the applicant to file what’s called a “Statement of Use”. A Statement of Use is simply a declaration or sworn statement from the applicant that they have actually started using their trademark in business. The United States Patent and Trademark Office charges a fee of $100 per class of goods/services for filing the Statement of Use.
However, it should be noted that only an applicant who is not actually using their trademark at the time of the filing of their trademark application would be required to file a Statement of Use. If you are already using your trademark in business at the time of the filing of your trademark application, then you would not have to file the Statement of Use, and you would not have to pay the fee for the Statement of Use. Additionally, even if a Statement of Use were required in your case, you would not be required to file the Statement of Use until about a year after you file your trademark application. The Trademark Office would notify you when the Statement of Use is due.
Once your trademark is registered, you will also have to maintain your trademark registration to avoid cancellation. For instance, after 5 years of registration, you will have to file a “Declaration of Continued Use”, in which you submit proof to the United States Patent and Trademark Office that you are still using your trademark in commerce. The government filing fee for the Declaration of Continued Use is $100 per class of goods/services. Additionally, after 9 years of registration, you will be required to renew your trademark registration by filing an Application for Renewal. The government filing fees associated with the Application for Renewal usually total $500 per class of goods/services.
How Long Does It Take?
As soon as you start using your mark in commerce, you establish what is known as “Common Law Trademark Rights.” This isn’t a guarantee that the mark will “belong” to you, as it’s still very possible someone else already registered the mark. You will also have a hard time attempting to take legal action against someone else based solely on common law rights.
A common question that I frequently get in my trademark law practice is, “How long does it take to get a trademark?” The answer may surprise you – in total, it will take roughly 13 to 18 months to get a trademark. Why?
|USPTO reviews the application||Up to 6 months|
|Responding to the Office Action (unless there are no issues)||6 months|
|Publication period in the Official Gazette||3 months|
|USPTO issues the certificate of registration||2 - 3 months|
|Total||Typically 12 - 18 Months|
If you add up the initial 4-6 months to review the application, the 6 months for the response to the Office Action, the 3 months for the publication period in the Official Gazette, and the 2-3 months for the issuance of the certificate of registration, you get a total of about 13-18 months to get a trademark. This may seem like a long time to most people, but it’s important to understand exactly why it takes so long.
The Date of Filing
To start off with, it should be noted that although the entire trademark registration process may take over a year to complete, a trademark applicant attains trademark protection from the moment that the trademark application is filed. Assuming you are eventually granted a federal trademark registration, your federal trademark rights will always be retroactive to the date of the initial filing of your trademark application.
For instance, let’s say that you file a trademark application on January 1, 2019. Because it usually takes about 13-18 months to complete the trademark registration process, let’s say your trademark registration certificate is not actually issued until April 15, 2020. Even though you trademark registration certificate was not issued until April 2020, your federal trademark rights would be retroactive to date of the initial filing, which in this example is January 1, 2019.
A Brief Overview of the Registration Process & Timing
Once the trademark application is filed, it will usually take the Trademark Office about 4-6 months to review the application. In their initial review, the Trademark Office is really looking to see if there are any mistakes on the application, or if the applied-for mark conflicts with any other registered trademarks.
If the trademark application is found to be in conflict with a previously-registered mark, of if there are any other issues with the application, then the Trademark Office will issue an Office Action. An Office Action is just a letter from the Trademark Office that identifies the problems or issues with the application that must be corrected or addressed. An applicant is usually then given 6 months to respond to the Office Action.
Once all issues are addressed and all requirements are met, the Trademark Office will then approve the application for publication on the Official Gazette. The Official Gazette is a weekly publication from the Trademark Office that serves to give notice to the public that a trademark application is about to be registered. Such public notice allows third parties or other companies to come forward and dispute any trademarks that they feel would infringe upon their rights. This publication process usually takes about 3 months to complete.
Assuming no one comes forward during the publication period to dispute your trademark application, the Trademark Office will issue the trademark registration certificate about 2-3 months after publication.
It is important to remember that you will need to do a bit of work to maintain your registration. You can read more about this in our article: How Long Does a Trademark Last?