Typical fees and costs for a Trademark application

This is a fair question for clients and prospective clients to ask. Unlike many areas of the law, the more unique the trademark as relates to the goods and services, the less costly the trademark is likely to be. The reason for this is that a unique mark will more likely sail through the USPTO than will one that is more descriptive. For example, Sludge, as a trademark for salad dressing would likely be approved quickly, whereas Salad Sauce would likely run into problems.

The fewer the goods or services associated with the trademark, the less the filing fees will be. The filing fee for each class of goods is $325 (unless you can use one of the canned descriptions, which can reduce the cost to $275).

Searching a trademark can cost between $100 and $500 or more, depending on the type of search requested or needed. A basic search of USPTO records, and the Internet, using a number of search engines is typically in the $200 range. Depending on the results of the search, further information may be necessary.

Legal fees for filing a trademark application, including the basic search, typically run about $500.

There are two kinds of applications. The first is based on actual use. This requires prior use in commerce and examples to be filed with the application. Advertisements, web pages, photos of the product for sale are some of the kinds of examples I have used. Many trademark applications are filed on the basis of intent to use, that is for a product or service yet to be offered in commerce. These types of applications require an additional filing fee (currently $100 per class) when filing an affidavit to allege use.

An unknown cost is the time required to respond to office actions from the Trademark Office examining attorney. Simple issues may be resolved for a few hundred dollars or less, more complicated issues can cost considerably more. Again, choosing a unique trademark and an appropriate description of the goods or services can minimize (or even eliminate) these costs.

The bottom line is that an application for a unique trademark, for a single class, already being used in connection with the goods or services, will probably run about $800. The typical case where an office action has to be dealt with, or an application to allege use has to be filed, will probably run to between $1200 and $1500.

As always, I am happy to respond to questions.

fgp@danburylaw.com 203-744-1929

Life afer a "merely descriptive" initial refusal

Trademark applications are sometimes met with an initial refusal by the trademark examining attorney as being "merely descriptive". This category of potential trademarks is rejected because if tells something about the product. For example, "Adhesive Tape" is descriptive and would not be permitted as trademark (it might be rejected as generic as well"). Recently, when faced with an initial rejection, on descriptiveness grounds, we were able to satisfy the examining attorney by assembling evidence that the proposed trademark had acquired secondary meaning and that the target audience for the trademark associated our client with the mark to the substantial exclusion of others. We did this through thorough research on the internet and other sources. Sometimes, you can't meet the burden of proving secondary meaning. If the trademark is in acutal use, you can amend to the Supplemental Register. While this brings fewer rights, it can provide a path to eventual registration on the Principal Register.

Stock Photo Warning

If you use photographs on your website, make sure that they are either royalty free (ones you have taken yourself or for which you have an unlimited license) or that you have made proper arrangements to license the use. Just because the photo is available for downloading on the Internet, doesn't mean you can use it for free. If not, you could be facing either hefty licensing fees or damage claims for copyright violation.

Reliance on a third party website developer is no defense - even innocent infringers can be held liable. There is software available to the stock photo companies that allow them to search the web for use of copyrighted material. You can be found. It has happened to more than one client.

questions, concerns: contact Fran Pennarola at fgp@danburylaw.com.

Protecting Your Trademark

A trademark's viability depends on continued use and vigilance. When it comes to trademarks, the law has a "use it or lose it" philosophy, which makes sense in light of a trademark's role as an identifier of the source of goods and services. If there are no goods and services that are being promoted through use of the trademark, it no longer functions as one. A subsequent user can file to cancel a dormant federally registered mark, or can defend an infringement action based on abandonment.

The length of time it takes for an unused trademark to be considered abandoned varies, but the owner of a trademark it wished to keep is advised to use it. There are, of course, United States Patent and Trademark Office requirements for periodic filings, the failure to comply with can result in abandonment.

In addition to lapse by nonuse, there is the possibility that failure to protect a trademark can result in its loss. Aspirin was originally a trademark, but was allowed to enter the public domain. Kleenex (r) and Xerox (r) are regularly policed and defended by their owners to prevent this. We send out letters to users of clients' trademarks to advise of their rights and to demand cessation.

Periodic searches on the Internet of your own trademark are prudent. There are companies that provide this service for a fee, and can access databases not always readily available.

Additional information about trademarks can be found at the Trademark Section of our website at www.danburylaw.com.

How we can help you secure a trademark

If you are thinking of securing a federally registered trademark for an existing product or service, or one you intend to offer, we can help. The first thing we do is to check for conflicting registered and common law trademarks. It is not enough to simply do a search at the USPTO for the exact trademark you wish to use. You need to consider variations, both in word and sound, as well as similar trademarks for closely related products. Next, we expand the search to consider other sources, including various Internet based searches, company name directories and other data.

Assuming no conflicts are found, we can file the application for you and shepherd it through the process, which can take 12-18 months (sometimes longer). Applications for existing products or services require samples of use of the trademark in commerce (advertisements, web pages, invoices - depends on the nature of the goods or service). Where the application is based on intent to use (for that new product in development), final registration will depend on proving actual use.

Fees and costs for a single class application tend to be in the $700-800 range, which includes the $325 fee to the USPTO. More involved applications result in higher costs as do the need to respond to the Trademark Office.

I am always happy to answer questions and can be reached via email at fgp@danburylaw.com or phone 203-744-1929. Further information about me can be found at www.danburylaw.com.

Food Industry trademarks

Many of my recent trademark filings have been for food products. Certainly in this highly competitive industry, a memorable name (to go along with a great product) can mean the difference between success and failure. Some common isues that have arisen in registration include:

1. Is the name sufficiently unique? It may not be enough that there are no other food related products that are similarly named. The trademark examining attorneys at the U. S. Patent and Trademrk Office will often raise flags on the grounds that the holder of an existing trademark, in an arguably related field, may want to expand. I recently confronted this in a matter involving a nutrition drink and a chiropractor. Because the chiropractor had a previously registered trademark in a portion of the phrase our client sought to use for a nutrition drink, and he used the trademark in connection with nutritional services he provided, the trademark examining attorney raised the possibility that the doctor might move into providing goods and issued a provisional refusal. The matter is yet to be resolved.

2. Is the proposed trademark simply a foreign word or phrase for a common English word? If the answer to the question posed is "yes", no trademark will issue (when proposed as a trademark for a related product or service). The USPTO requies you to provide the English translation of foreign words. One could not get a trademark for "Coche" for motor vehicles, as it is simply the Spanish word for car.

3. Is the proposed trademark the surname of a living person? If you intend to use a surname as a trademark (even if it is your own), you will need the permission of the living person whose name you are using. Permission has to be in writing and filed with the application.

A little advance planning (and searching) can go along way to mimimize these and other issues.

Consent or Coexistence Agreements

Your Acme Motor Oil can coexist with Acme Burgers and Acme Bulldozers with little pushback from the U.S. Patent and Trademark Office and little likelihood that any of the other Acmes has a legitimate complaint. Registration should be allowed. What about Acme Antifreeze?

Here you run in to the "Likelihood of Confusion" argument that is the the ban of a trademark attorney's exisitence. While in your mind there is no way that anyone could mix up the source of Acme Motor Oil and the source of Acme Antifreeze, since both are in the sphere of automotive products (both are engine area additives), the USPTO and your fellow Acme supplier may things differently. To mimimize the possibility of rejection and to prepare for the inevitable office action (a note from the Trademark Examining Attorney explaining the probable rejection of the Acme Oil trademark in the face of the Acme Antifreeze mark). you may want to seek an agreement with the owner of the the Antifreeze mark to consent to your use.

A propertly drafted consetn or coexistence agreement can go a long wany to meeting"likelihood of confusion" issues, but it is not a total panacea. There really needs to be some distinguishing features between the two products. For example, I doubt that any consent agreement could handle the confusion issues arising if Hostess, a maker of snack Cakes, had an agreement with the holder of the Hostess Cupcakes trademark. In addition to some distinctions between the two products, the agreement should cover efforst that the companies will make to avoid confusion, cooperatin in the event of confusion and dispute resolutions.

In the even a coexistence agreement would not work, a license agreement may.