© 2002-2008 Leading-Edge Law Group, PLC.  All rights reserved.

Warning:  This Web page is not legal advice to anyone, including you.  Your reading this information does not form an attorney-client relationship with this law firm.  The following information is general and may not apply to your situation.  Also, this page provides only a brief, high-level and partial summary of an extensive body of U.S. trademark law.  This page could become out of date as trademark law evolves.  Please do not email us with questions about the content of this page.  If you are interested in contacting us about possible legal representation, please call us.

More Information – Clients-Only Advisories.  Beyond the content of this Web page, we have created a substantial set of client advisories on various aspects of the trademark registration process and trademark issues generally.  We make these available only to our clients.  Through these advisories, we provide a level of guidance and information regarding trademarks that greatly exceeds what many other trademark practitioners provide.

Links to Content on this Page:

• What is a Trademark?
• How Are Trademark Rights Formed?
• Tips for Choosing a Sturdy Trademark
• The Importance of Trademark Clearance Research
• Trademark Registration – Process and Benefits
• Trademark Marking
• Duration of Trademark Rights
• Trademark Infringement
• Trademarks in Business Transactions – Be Careful
• Dealing with Cybersquatters
• Our Flat Legal Fees for Trademark Clearance and Registration
• Use a Watching Service
• Our Trademark Experience 

What is a Trademark?

A trademark is a word, name, phrase or symbol used to identify the origin of goods or services. (Actually, a service trademark applies to services, and a trademark applies to goods, but we’ll call both a “trademark” for simplicity’s sake.)  Under the right circumstances, a trademark can be a product name, a service name, a business name, a logo, a character, a domain name (when used as more than just a domain name), a tagline, a sound, a color or a shape.

Examples of famous trademarks include: the word EXXON, the phrase “WE BRING GOOD THINGS TO LIGHT,” the curvy shape of a Coca-Cola bottle, the McDonald’s golden arches and the sound of the NBC chimes (the musical notes G-E-C, which stand for “General Electric Corporation”).

How Are Trademark Rights Formed?

Common Law Rights.  Generally, you gain common law rights to a trademark just by beginning to use it on goods in conjunction with performing services.  In other words, a “common law trademark” is a trademark that hasn’t been registered with the United States Patent & Trademark Office (“USPTO”) or with a state.  Yet, generally speaking, common law rights only extend to the geographic area of the use of the trademark.  Also, you must be the first in your area to use that trademark.  If another entity began using a confusingly similar trademark for similar goods and services before you begin your trademark, then that other entity may have superior rights to the trademark, thereby preventing you from using your trademark.

State Registration.  Statewide trademark registration is obtained by registering your trademark with your state registry of trademarks (e.g., in Virginia, the State Corporation Commission).  A state trademark registration conveys much less power, protection and prestige than a federal registration.  In most situations, we recommend seeking state trademark registration only when federal trademark registration is unavailable for some reason.  To obtain a Virginia trademark registration, you must have begun using your trademark to promote the sale of your goods or services.

Federal Registration.  Federal registration is obtained through the USPTO.  You can file an application for a trademark already in use or for a trademark you intend to begin using.  A federal registration carries far more power than a state registration.  Below, this page explains the advantages of federal registration.

My Company Has Registered Corporate Name – Does That Protect Me?  No.  A corporate name issued by a state is not a trademark and does not create any trademark rights.  Even “trade names” that can be registered with a state or on the local level are not trademarks.  Only a trademark allows you to prevent others from using a confusingly similar name for similar goods and services.

My Company Has Registered A Web Domain Name – Does That Protect Me?  No again.  To be clear, “registering a domain name” means securing the right to use it, usually from an entity such as Network Solutions or Register.com.  All that a domain name registration does is rent usage of the domain name for a period of time.  A domain name registration by itself does not create trademark rights.  Operating a Web page at a domain name under the same name as the domain name might create trademark (or trade name) rights if you promote the sale of goods or services there.  

Tips for Choosing a Sturdy Trademark

If Possible, Choose a Strong Trademark.  A pecking order exists for the strength of trademarks. All other things being equal, choosing a trademark higher in the pecking order will allow you to keep your competitors further away from imitating your trademark:

• The strongest trademarks are fanciful trademarks, which are made-up words (for example, EXXON for gasoline).
• The next strongest trademarks are arbitrary trademarks, which are words that have nothing to do with the product or service (for example, AMAZON for book selling).
• The next strongest trademarks are suggestive trademarks – words that suggest attributes of, but don’t describe, the goods or services (for example, CHAMPION for sporting goods).
• Next in the order of strength are descriptive trademarks – words that describe the goods or services (for example, U.S. NEWS AND WORLD REPORT for a news magazine).  Descriptive trademarks do not afford any trademark protection, and cannot be registered in the Principal Register of trademarks maintained by the USPTO, unless you can prove that consumers recognize that trademark as identifying your goods or services.
• Next come generic words – words that state what the goods or services are (for example, CAR for an automobile). You cannot have trademark rights in a generic word or phrase and, accordingly, you cannot register such a word or phrase as a trademark.

Don’t Get Attached to a Trademark Too Soon.  Often someone will come to us committed to using a particular trademark, perhaps after making a substantial investment in it.  Sometimes that person unfortunately learns from us that the proposed trademark is weak, potentially infringing on the trademarks of others or faces other serious legal obstacles.

If possible, come to us in the beginning with a short list of trademark candidates; five to ten is a good number.  We can advise you on the comparative strength of the candidates, and do preliminary clearance research on the candidates, in order to identify the best candidate for full trademark clearance research and possible registration.

Use a Three-Part Strategy in Picking a Trademark.  When possible, try to pick a company name that’s available (1) as a trademark for your intended goods or services; (2) as a Web domain name (so that prospective customers can find you easily); and (3) as a corporate name (if you are picking a company name instead of a product name).

The most desirable Web domain names are those ending in “.com.”  Many of the good ones are taken, so you may find it worthwhile to purchase a “.com” domain name from a broker or an individual owner.  We can assist you in investigating the ability of the domain name holder to give good title to the domain name (e.g. checking whether there likely are trademark claims of others concerning the domain name) and with closing the transaction in a safe manner.  There are more workable domain names available in other top-level domains (e.g. .net, .biz, .info), but we generally recommend against using such a domain name.  

The Importance of Trademark Clearance Research

Don’t Skip It!  It’s tempting for budget-conscious clients to skip trademark clearance or to not do full trademark clearance.  Skipping clearance research almost always is risky and a mistake.  You might save $1400-$2000 in the short run by skipping clearance research, but you run the risk of picking and building goodwill in a name that you may be forced to drop later.  You might even have to pay damages to the entity that forces you to change your name, not to mention the substantial attorneys’ fees you’ll incur in examining and initially resisting the demand for a name change.  (John Farmer wrote a column on June 28, 2004 about this issue.)  We have seen businesses spend substantial six-figure sums to take care of trademark conflict issues that could have been avoided by proper clearance research.

Do It Even for Existing Trademarks.  Even if you are seeking registration of a trademark you already are using, usually you should perform trademark clearance research.  Doing so may uncover an obstacle to registration that otherwise might not come to the surface after you have spent a couple or several thousand dollars and many months in the registration process.  Also, the earlier you uncover a trademark problem, the cheaper and less painful it is to fix it.

Step 1 – Preliminary Trademark Clearance Research.  Usually, the best first step in trademark clearance research is for this firm to check the online database of the USPTO, mainly for registered trademarks and applications still in process.  Also, trade publications can be consulted and search engine results examined for potentially conflicting common law trademarks.  Think of this research as the “80/20” rule in action; you can find 80% of the likely trademark problems with about20% of the expense/effort of full trademark clearance research.  The purpose of this step is to weed out obvious problem trademarks at low cost.  (We discuss legal fees below.)  Preliminary clearance research doesn’t clear a trademark for usage; it just identifies a top candidate for full trademark clearance research. You can attempt to do your own preliminary clearance research on the USPTO Web site (www.uspto.gov), although we often can get more out of that system than our clients can due to our familiarity with it.

Step 2 – Full Trademark Clearance Research.  With full trademark clearance research for a word trademark, we order a trademark research report from a commercial service (usually Thomson CompuMark), which report essentially is a data dump of information on registered and potential common law trademarks.  We analyze that report and give you a written opinion on the results, namely the level of risk we see in proceeding with the trademark candidate based upon the search results.  Usually a client will pick the most promising trademark from the preliminary research round and have us perform such full clearance research on it.  The client uses that full clearance research to decide on whether to commit to that trademark and to file a registration application for it.

The Registration Process Alone Isn’t Satisfactory Clearance.  Presently it takes, on average, 20 months for a U.S. trademark registration application to mature into a trademark registration.  Businesses can’t wait that long to see if a trademark will achieve registration.  Thus, a purpose of trademark clearance research is to give businesses the information they need to decide on whether to commit to a trademark in advance of full review and processing by the USPTO.  Also, the USPTO trademark examining attorney does not examine or consider common law trademarks when deciding whether to register your trademark.  The holder of an older common law trademark can object to your application during the publication period (the public gets a chance to object to trademark registrations before they are granted), but few owners of common law trademarks monitor the Official Gazette (the USPTO publication of pending, approved trademark registration applications).  Yet, the failure of a common law trademark owner to object during the publication period does not bar future action by that trademark owner.  The owner of a common law trademark remains a threat to seek cancellation of your trademark registration and might obtain an injunction forcing you to stop using your trademark.  Thus, one cannot and should not rely on the trademark registration process to clear new trademarks. 

Trademark Registration – Process and Benefits

The Federal Registration Process.  The process for registering a trademark with the USPTO involves much more than sending in a document to be recorded; it isn’t automatic like recording a deed to a piece of real estate.  Trademark examining attorneys carefully scrutinize applications, sometimes reject them and usually require some changes.  After the USPTO approves your application, the public is given an opportunity to object before the USPTO grants registration.  On average, this vetting process takes about 20 months.

The USPTO examining attorney examines many aspects of an application, including:  (a) whether the applied-for trademark is too similar to a registered trademark, or previously-applied-for trademark, for similar goods and services; (b) whether the applied-for trademark is merely descriptive or, worse yet, generic; and (c) whether the description of goods and/or services complies with rigorous USPTO requirements.

Two Kinds of Federal Registration Applications.  You can apply to register a trademark already in use (an “in-use” application) or a trademark candidate not yet in use (an “intent-to-use” application).  Comparing the two, in-use applications are a quicker route to registration and less expensive in terms of both filing fees and legal fees.  In addition, several legal routes exist for registering trademarks already applied for or in use in other countries.

State Trademark Registration.  Each state, including Virginia, has its own trademark laws.  You can register a trademark on the state level.  Virginia only accepts in-use applications; it does not accept intent-to-use applications.  The sections below compare the relative advantages of federal registration versus state registration. 

Why Federally Register a Trademark with the USPTO?  Registering your trademark with the USPTO creates many advantages for you over common law trademark status and state trademark registration.

• The Power to Grow.  Registration can give you nationwide rights to your trademark.  It reserves your right to use it across the country, so that you can push away most imitators as you roll out your products and services across the country or on the Web.  On the other hand, if you rely on your common law trademark rights or even a patchwork of state trademark registrations, you may not be able to use your trademark elsewhere as you expand.
• Uncover Problems Earlier.  The registration process may uncover problems with your choice of trademark that likely would be much more costly to address later.  Companies who try to proceed on common law rights sometimes run into obstacles after spending a lot of money building recognition in their trademarks.  Usually these companies face a future without attractive trademark options and with high legal bills.
• Puts Others on Notice.  Registration puts others on notice of your trademark, thereby giving you potential access to a powerful set of remedies, such as the potential recovery of damages, perhaps trebled damages.  You may not have access to such remedies if you rely on common law trademark rights.
• Coveted Symbol.  Only federally registered trademarks can use the coveted ® symbol.  Common law and state trademarks may use “TM,” “SM” or similar designations.
• Protect Your Domain Name.  If you use your Web domain name also as a trademark, registration helps to protect against someone taking away your domain name in the future, and against cybersquatters registering, trafficking in or using a confusingly similar domain in bad faith.
• Valuable in Sale of Product Line or Business.  A registered trademark is more easily sold or licensed to other users than a common law trademark.  If you ever intend to sell your business or product line, being able to convey solid trademark rights will be important to the prospective buyer.
• Helpful Presumptions in Litigation.  A trademark registration creates some helpful presumptions in litigation about your trademark, such as a presumption that your trademark is distinctive of your goods and/or services.
• Tax Benefits.  When no longer in use, a trademark may be abandoned and the associated goodwill might be deductible for tax purposes.
• Foreign Rights.  You obtain a six-month grace period from the time of filing your federal application to file foreign applications and to have them deemed filed on the same date as your U.S. application.  That priority is particularly valuable in non-U.S. countries that grant registration on a first-to-file basis instead of a first-to-use basis, because this priority enables you to fend off opportunistic trademark copycats in other countries.
• Can Apply Before Use.  You can apply to register a federal trademark before you begin use of that trademark in commerce (this is called an “intent-to-use application”) if you have a bona fide intent to use that trademark and do so within about three years of application.

To compare, these are advantages of state registration vis-à-vis federal registration:

• Cheaper, Quicker.  Usually, state registration is quicker and far cheaper than federal registration.
• Fallback Option.  If someone else’s common law trademark poses an obstacle to federal registration, then a patchwork of state registrations may be the best way to proceed.  Also, sometimes state registration makes sense when a potentially blocking federal registration exists, if you believe that your use of your trademark will not infringe upon the rights of the owner of the federal trademark.  

Trademark Marking

The owner of a trademark should use an appropriate symbol to designate the trademark as its intellectual property.  Such a symbol puts the world on notice that the trademark isn’t intended to be a generic or descriptive word that others are free to use for describing their goods or services.

If and when you achieve federal trademark registration, you become entitled to use any one of three designations of registered trademark status:  ®, or “Registered U.S. Patent and Trademark Office,” or “Reg. U.S. Pat. & TM Off.”  It is illegal to use any of these three symbols of a registered trademark unless and until you achieve federal trademark registration.  A state trademark registration does not entitle you to use any of these symbols.

For common law trademarks, you may use the symbol “TM” next to your trademark to designate that you have a trademark for certain goods.  Similarly, you may use an “SM” to designate that you have a service trademark for certain services.  

Duration of Trademark Rights

Trademark rights continue indefinitely as long as the trademark’s owner does not abandon the trademark or allow the trademark to become a generic term (e.g., “google” used as a term for “Web searching”).  For federal registrations, a declaration must be filed during the sixth year after issuance, certifying that the trademark is still in use in commerce.  Also, a renewal must be filed every 10 years following initial registration.  You cannot perpetuate a federal trademark registration to keep dibs on a trademark if you have abandoned usage of that trademark.  

Trademark Infringement

This page cannot due justice to the extensive law concerning trademark infringement in a short summary.  In a small nutshell, trademark rights may be enforced in either state or federal court.  The relevant federal act, the Lanham Act, provides a range of individual causes of action, such as the following:

• Trademark infringement – unauthorized use of a trademark, or use of a trademark that is confusingly similar to a preexisting trademark and the senior and junior trademarks are used for similar goods and/or services; the classic test for trademark infringement is whether relevant consumers are likely to be confused by the coexistence of the senior and junior trademarks.
• Unfair competition – wrongful trademarking of goods or services in a manner likely to confuse the consumer as to the true source of goods or services.
• Dilution – use of a famous trademark in a way that tarnishes the image of, or dilutes the power of, the famous trademark; famous trademarks tend to be household names, such as COCA-COLA or MCDONALD’S.
• False advertising – false and disparaging trade statements (1) about your product or service, (2) about the product or service of a competitor, or (3) made in a comparison between your product or service and a competitor’s.

Remedies for Infringement.  Where trademark infringement is proven, possibly available relief includes temporary, preliminary and permanent injunctions, pre-judgment seizure of infringing goods, seizure of infringing goods by the Customs service, other equitable relief, actual damages, a disgorgement of the infringers’ profits, enhanced damages, and attorneys’ fees.

Trademarks in Business Transactions – Be Careful

This page does not attempt to summarize the extensive law concerning how trademarks must be handled in business transactions.  We’ll leave it at noting a few problems we often see.  Overall, even experienced business attorneys, due to ignorance or misconceptions concerning the requirements of trademark law, frequently mishandle trademarks in business transactions.  Common mistakes include attempting to transfer ownership of intent-to-use trademark registration applications before proving trademark usage to the USPTO, failing to transfer goodwill along with the related trademark, and inadvertent sweeping of trademarks into security interest grants or other loan collateral.  Such mistakes can extinguish trademark rights.  The loss of rights due to such causes often is not detected until the trademark owner tries to assert trademark rights against a putative infringer.  

Dealing with Cybersquatters

In some circumstances, trademark law can provide a basis for taking away a domain name if the domain name was registered, used or trafficked-in with a bad faith intent concerning a trademark.  A conventional suit in federal court for trademark infringement (or dilution or tarnishment) might attack such cybersquatting.  Yet, other remedies exist that specifically target cybersquatting.

UDRP Arbitration.  The Internet Corporation for Assigned Names and Numbers (“ICANN”) maintains a Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) under which domain name disputes can be resolved in an administrative process without having to appear in court in person.  This procedure often is quicker and cheaper than a federal lawsuit, although it does not offer the full range of remedies available in a federal lawsuit.

ACPA Litigation.  A federal act called the “Anti-Cybersquatting Consumer Protection Act,” which is part of the federal Lanham Act, provides specific remedies for cybersquatting.  The ACPA permits recovering damages and attorneys’ fees from cybersquatters in some cases, unlike the UDRP.  The recoverable damages can be either actual damages suffered or statutory damages of as much as $100,000 per domain name.  The threat to recover damages and attorneys’ fees can be an effective lever against cybersquatters who otherwise price their payoff demands just below the cost of extracting a domain name by use of the UDRP process.  Also, a procedure exists to sue under the ACPA even if the registered owner of the offending domain name cannot be found or required to litigate in a U.S. court, although recovery of damages and attorneys’ fees is not available under the ACPA in those instances.

What We Can Do for You

Practice Areas.  We have substantial trademarking experience at the international, federal and state levels. Our trademark services include:

• Trademark selection counseling
• Preliminary and full trademark clearance research
• Registration with the USPTO or state trademark offices
• Post-registration trademark maintenance
• Counseling regarding the proper care and feeding of trademarks
• Serving as coordinating counsel for obtaining and maintaining trademark registrations in other countries; we can assist you with finding and hiring appropriate trademark counsel in other countries and can coordinate the activities they take on your behalf; we act as your single point of contact
• Applying for trademark registration in countries other than the U.S. that also are members of the Madrid Protocol (John Farmer wrote columns on November 25, 2002, and October 27, 2003, about using the Madrid Protocol)
• Watching for potentially infringing federal trademark applications submitted by others and for infringing trademarks used by others
• Litigation representation in cases involving trademark infringement, unfair competition or false advertising; we can serve as your sole litigation counsel, or serve as coaches or co-counsel to your litigation counsel
• Trademark licensing, trademark assignments, security interests in trademarks, trademark aspects of franchise agreements, and commercializing products that include trademarks
• Web domain name protection via trademark registration and auditing Web sites (for both trademark issues and for other intellectual property and other technology law issues).  

Our Flat Legal Fees for Trademark Clearance and Registration

Flat Fees – What They Include.   Below we state flat legal fees for particular services. These fees do not include any significant in-person or telephone consultation; they include only performing the services themselves.  We charge for consultation on an hourly basis because clients have greatly varying needs for consultation.  Also, for some flat-fee legal services, we exclude from coverage dealing with some hurdles that could arise, because such hurdles should arise infrequently and because the cost to surmount such hurdles varies greatly.  We explain those exceptions when describing the flat legal fees.

Our Flat Legal Fees Are Different – Broader Coverage.  Our flat legal fees may seem high in comparison to other trademark firms, but that’s because our flat legal fees for trademark registration cover all of the planned steps in obtaining trademark registration, whereas the few other firms that offer trademarking flat legal fees have those flat legal fees cover only preparing and filing the application.  Such flat legal fees at other firms don’t include application prosecution.  Yet, for example, a lot of otherwise billable time can be expended in wrestling with the Trademark Office over the description of goods/services or the quality of the specimen.  Usually it takes substantially less work to prepare and file a trademark registration application than it does to push that filed application through the vetting process.  Thus, our flat legal fees frequently save money for our clients when compared to what the fees would be on a straight hourly basis, whether such hourly work is performed by this firm or another firm.

Menu of Filing Fees and Flat Legal Fees.  For ease of reference, here’s a menu of our trademark services flat legal fees.  The filing fees are fees charged by the USPTO.  Please read the explanations below to understand what these flat legal fees do not include:

Preliminary Trademark Clearance Research

We perform preliminary trademark clearance research on an hourly basis.  The amount of time the research will take depends upon the number of trademark candidates being researched and whether our research includes checking any common law sources (e.g. Google) or, instead, just checking the online records of the USPTO.  When we check only USPTO records, often such preliminary research takes only an hour or less.

Full Trademark Clearance Research

Here, we obtain a trademark research report (a data dump) from a commercial research service, usually Thomson CompuMark.  We review the report and prepare an opinion letter advising you on whether you likely can register the trademark and use it without infringing on the rights of others. 

Effective January 1, 2008, our flat legal fee for reviewing the report and preparing the letter is $1200 per trademark research report.  This does not include the expense of the report itself. Presently, Thomson CompuMark charges $570 for a report on the availability of a word trademark (as opposed to a logo trademark) if ordered on standard turnaround (3 business days).

A logo is a mark that is a design without words, or, even if it has words, the design is a major distinctive element of the mark.  If your logo doesn't have words, then the full clearance research expense will be $475 for the report and an $1200 flat legal fee for reviewing it.  If your logo has words and a design, then, to be comprehensive, you should have us do separate trademark research on the word(s) and on the design.  The research doesn't overlap - one report examines the words and another examines the design.  Because that means two reports and two analyses, the cost will be $1045 in report costs and $2400 in flat fees.

Unfortunately, for logos, Thomson CompuMark does not offer research reports that scan common law logo trademarks.  It can search only records at the USPTO, and will search only in the class into which your goods/services fall.  (If your goods fall into more than one class, you will pay more for the report, because Thomson CompuMark charges for design searches on a per class basis.)  Thus, we advise clients to look for similar logos in trade publications and other places where the logos of competitors may be found, and to consult us if any found logos appear to be similar to the client's intended logo.

Trademark Registration Services

If a trademark clears the full clearance research stage, then we apply to register the trademark with the USPTO.  In rush situations, we can prepare and file an application with same-day service.  There are two types of registration applications, one based on existing use of the trademark (an “in-use application”) and one based upon a future intent to use the trademark (an “intent-to-use application”).

For both kinds of applications, we offer a flat legal fee that encompasses these services:

• preparing the application, including preparing the description of goods and/or services and revising it and consultation with you; the USPTO has picky guidelines for how goods and services must be described;
• responding to routine inquiries and requests from the USPTO’s trademark examining attorney;
• resolving any routine dispute with the USPTO over the description of goods and/or services;
• proving your usage of the trademark in commerce to the USPTO, provided you have (when the time comes) items that demonstrate trademark usage and that are in a form the USPTO will accept;
• otherwise pushing the trademark to registration and maintaining the trademark registration application in our application docketing system; and
• reminding you of deadlines for maintaining and renewing your trademark registration.

Effective January 1, 2008, our flat legal fee for an application in a single international class is $1900 for an in-use application and $2400 for an intent-to-use application.  Generally an intent-to-use application takes a longer time to prosecute and requires the filing of an additional statement upon use of the trademark.  For each additional class in a registration application, the flat legal fee is $350 regardless of whether it is an in-use or intent-to-use application.

The USPTO breaks down all goods and services under the sun into 45 international classes, and one must pay a filing fee for each class covered in an application.  Some large, “house brand” applications we have filed have spanned as many as seven classes.  Routine applications usually have only one or two classes.

Our flat legal fees do not include filing fees or other fees charged by the USPTO.  Presently, the USPTO charges a filing fee of $325 for each international class covered in an application if the application is filed electronically.  The USPTO charges $375 per class if an application is filed on paper.  We file applications electronically except when the client’s materials don’t permit an electronic filing, which is rare.

Our flat legal fees generally do not include some responses to problems that may occur in the registration process other than routine application finalization issues; some of these routine issues (such as reforming the description of goods and/or services) are described above.  Often, if a problem arises, we will have warned you of the possibility that the problem could arise and you will have made the decision to press on with the application.  Otherwise, such outside-the-flat-fee problems arise infrequently.

The USPTO raises problems with registration applications by “office actions.”  An office action is a notice by the USPTO that some problem exists with the application that must be corrected, if possible.

Here are examples of problems that could arise in an application and that are not covered by our flat legal fees.  If such a problem arises, we can advise you of your chances to overcome the obstacle and the likely hourly fees you will incur in attempting to do so:

• A rejection asserting that your trademark is confusingly similar to an existing registered trademark or to a trademark for which a registration applicationwas submitted prior to your application.
• A rejection asserting that your trademark does not qualify for registration because it is descriptive, geographically descriptive, geographically misdescriptive, generic or not a trademark at all.
• A refusal of the trademark examining attorney to accept all or part of a description of goods and/or services that you regard as necessary to your application.
• A rejection of your proof of usage of your trademark in commerce when you depend upon having the trademark examining attorney accept that proof of usage.
• An opposition to the registration of your trademark filed by a third party.
• Any appeal of an adverse, final decision made by a trademark examining attorney.

In addition, our flat legal fees do not include maintenance activities for registered trademarks other than reminding you of deadlines.  These maintenance activities include:

• filing an affidavit of continued use, which is required to be filed during the fifth year following trademark registration;
• filing an affidavit claiming trademark incontestability, which may be filed after five years of continuous use of a registered trademark; and
• renewing a trademark registration; trademark registrations granted after November 15, 1989, must be renewed every 10 years.

Logos. If you wish to obtain federal trademark registration for a logo that contains distinctive design elements and words, then we usually recommend filing two federal trademark registration applications – one for the whole logo (including the words) and a separate one for the words only. The design elements of logos tend to change over time as tastes evolve, so the logo eventually may creep outside of registration protection and require a new trademark registration application. Since the word elements of trademarks tend to stay the same (or, at least, they should), having a trademark registration for the word elements can protect your trademark registration seniority. Trademark rights are based upon seniority of usage, so generally you should get a trademark application filed as soon as possible and keep it alive for as long as you offer for sale the covered goods or services.

Example of Total Flat Fees

Here are examples of the likely total flat fee for two commonplace scenarios:

Example One – A Simple Case:  We perform preliminary trademark clearance, which identifies no problems.  We then order a full trademark research report and produce an opinion letter that again identifies no material obstacles.  We then apply to federally register a trademark already in use and that fits into one international class:

Example Two – A Complex Filing:  You develop a new logo, which includes words and a design, for use in a new business.  The goods and services that you will brand with the logo are extensive.  We perform preliminary trademark clearance on the word elements, and that reveals no problems.  We then order a full trademark research report for the word elements of the logo and write an analysis letter to you based upon that report.  We also order a full trademark research report for the full logo, including the Design element, and write an analysisletter to you based upon that report.  Assuming these steps do not identify any problems, we file two federal, intent-to-use registration applications – one for the logo and one for just the words in the logo.  Presume each application covers a broad array of services, so it falls into three international classes.  When (and presuming) the USPTO approves of the application, we assume that you will begin and be prepared to file proof of usage of this trademark within six months, because there will be extension fees and costs if you take longer to begin usage:

Use a Watching Service

Once you commit to using a trademark after conducting research to clear it, we recommend subscribing to a trademark watching service.  Such a service will watch for potential infringement of your trademark.  You should conduct such watching to preserve the power and potential fame of your trademark and to prevent others from encroaching on your trademark rights, thereby damaging them.

The cost of a trademark watching service varies depending upon the scope of the watching selected.  Trademark watching services offer a range of watching packages; they vary in geographic scope of coverage and depth of watching.  These watch reports provide only raw data, not analysis.  We can quote an annual flat legal fee for reviewing the periodic watch service reports.  Should you decide to consult with us regarding any of the things found or to take further action, we would do so at our standard hourly rates. 

Our Trademark Experience

We have deep experience and extensive resources.  We can file applications on a same-day electronic basis with the USPTO.  We maintain an electronic docket of all of our clients’ applied-for and registered trademarks.  We provide reminders of important, coming deadlines in the registration process and for registered trademarks.  John Farmer has prosecuted many trademark registration applications and coordinated numerous foreign trademark filings.  Also, we’ve litigated trademark registration oppositions and infringement cases, and that experience helps us perform better when preparing and prosecuting registration applications.

© 2006-2008 Leading-Edge Law Group, PLC.  All rights reserved.