TM Search and Registration
The Process and Costs
Introduction
The trademark search and registration process can be long (typically 1.5 - 2 years) and can cost several thousand dollars. However, making sure that a mark is available (non-infringing) and then federally registering it benefits your business in several ways. Here’s how . . . .
There are three basic facts to always keep in mind when dealing with trademarks:
- U.S. trademarks are governed by a system of “priority” or “superiority” -- the first person / entity to use a mark in “interstate commerce” can prevent everyone else from using the same or similar mark for the same or similar services. The first user is called the “prior” or “superior” user.
- You may also obtain trademark rights in the U.S. by filing an Intent to Use (“ITU”) federal trademark registration application. There are no rights associated with an ITU application until the U.S. Patent and Trademark Office (“PTO”) accepts your proof that the mark is actually used in “interstate commerce.” Once the PTO registers the mark the mark’s “priority” date is the filing date of the application, rather than the first use date (which is usually after the filing date).
- Trademark infringement occurs when it is likely that consumers would be confused regarding the origin of a product / service, or when they would perceive an association between products, or a sponsorship between companies that does not really exist. This is what trademark professionals mean when we say there may be a “likelihood of confusion.”
Trademark Searching
Investigating a trademark’s availability by conducting a full trademark search (typically through a search company, such as Thomson & Thomson or CCH Corsearch) before you adopt the mark greatly reduces the likelihood that you’ll be accused of trademark infringement. One headache that frequently results from trademark infringement battles is the infringer having to change its mark, including ceasing use of the mark on its letterhead, business cards, brochures, phone listings, signage, website domain name and all other advertising, marketing, and promotional materials and purchasing all new materials with the new mark. An infringer may be liable for three times the trademark owner’s damages, as well as the trademark owner’s attorneys’ fees and its costs of bringing the suit (in addition to having to pay its own attorneys’ fees and costs) if the case goes to trial. Further, most insurance policies do not cover trademark infringement lawsuits, even under an “advertising injury rider.”
Trademark Registration
Once you know that your desired mark is “clear,” or “available,” it is wise to register your mark federally. Trademark rights are territorial, meaning that trademark owners only get protection for their marks in the locations in which they are actually doing business under the mark. However, if your use of your mark is “in interstate commerce,” you can protect your mark in every state in the country simply by federally registering it. This means that only you (and none of your competitors) can legally use the same or similar mark for the same or similar goods / services all across the United States. It is rare that a mark is used solely in intrastate commerce (within only one state), but this is something that is fact-specific, therefore you should discuss it with your trademark counsel to be sure that your mark is in use in “interstate commerce,” as is required for federal registration.
Federal trademark registration is also a good idea because the Certificate of Registration evidences that the mark is valid and the registrant owns the mark and the exclusive right to use the mark nationwide for the goods / services recited in the registration. These things would be quite time consuming and costly to prove in litigation and the Certificate of Registration eliminates that need. Please note that it is wise to preserve the records of your first and continuous use of your mark in case the validity of the registration is challenged and because the more evidence that supports or shows your use, the better. A Certificate of Federal Registration also acts like a “title” or “deed” to your trademark, the importance of which is obvious. This is especially important if you plan to sell your business, whether now or in the future.
International Classification System and Recitation of Goods and Services
The Nice Agreement is an international trademark treaty that sets forth 45 International Classifications of goods and services. All U.S. applicants must use this classification system when applying for trademark registration. The PTO charges a $335 filing fee per International Classification. It is important to determine in which International Classes the mark is / will be used before conducting the trademark search.
According to the PTO, it initially refuses to register 70% – 80% of all registration applications filed with it. The majority of the refusals to register are based upon the application’s recitation of goods and services (how the applicant describes what it does / sells under the mark). There is a Manual of Acceptable Identifications of Goods and Services on the PTO’s website, with which the applicants must comply. It is often helpful for applicants to review the registration records of their competitors to determine what recitations the PTO may accept. However, it is also important to know the PTO examiner’s mantra – “Just because another examiner (or 10,000 examiners) did it, does not mean it was right.” In other words, just because another examiner allowed a certain recitation does not mean that you will be able to use it as well. It is also important to determine the recitation of goods / services before ordering the search.
Trademark Searching Process and Associated Costs
Using Thomson & Thomson’s Standard 4-day Turnaround (prices as of 12/03, prices likely to increase in 01/04)
- Preliminary Search on PTO website & GOOGLE or other internet search engines for same / similar marks for same / similar goods & services.
The preliminary trademark search generally takes 1-2 hours at hourly rate of $200/hour.
You may attempt to conduct this search yourself. However, please recognize that there is value in having a trademark professional conduct the search, as an experienced trademark professional is more likely to spot the types of marks that a court / competitor would claim cause a “likelihood of confusion.” - If the Preliminary Search comes back “clean,” the next step is to order a “full” search. I use a third party called Thomson & Thomson (www.t-t.com), whose prices depend on the nature of mark and the number of International Classes in which the mark will be used. T&T’s standard four-day turnaround pricing is as follows:
WORD MARKS | Nike |
| All International Classes | $485 |
COMPOSITE MARKS | Nike
|
| 1 International Class | $801 |
| 2 International Classes | $959 |
| 3 International Classes | $1107 |
| 4-15 International Classes | $1220 |
| All 45 International Classes | $1679 |
DESIGN MARKS |  |
| 1 International Class | $405 |
| 2 International Classes | $580 |
| 3 International Classes | $745 |
| 4-15 International Classes | $870 |
| All 45 International Classes | $1380 |
T&T will send both the client and the attorney copies of the search report at no extra cost. Ideally, legal counsel will review the report and draft and send you a formal opinion letter regarding the report results. However, in the interest of cost-savings, you may choose to review the search report results yourself, or to combine efforts with your legal counsel. Again, please recognize the value in having a trademark professional review the search, as nothing can substitute for the trademark experience that the trademark professional uses in their evaluation of the search report.
The search report evaluation is billed at an hourly rate of $200/hour.
Trademark Registration – In Use Application Process and Associated Costs*
- Draft and file federal registration application with U.S. Patent and Trademark Office (“PTO”) via “eTeas,” (PTO electronic filing)
($500 flat fee) - Receive filing receipt from PTO (day of filing) (included in flat fee)
- Examination period -- receive and respond to correspondence (office actions “OA”) from the PTO (can take six to eight months from date application is filed to receive 1st OA) ($200/hourly fee)
- Application is Approved for Publication (usually eight to fourteen months after filing application)
($100 flat fee) - Mark is Published for Opposition (usually one to three months after mark is approved for publication) (mark is published in the “Official Gazette,” a publication of the U.S. Government. Anyone who believes that they would be “damaged by registration of the mark” has thirty (30) days from Publication of the mark to file an Opposition to the registration of the mark)
- FEDERAL REGISTRATION!! ($100 flat fee)
*All fees are for electronic filing of up to three classes per application. For additional classes please add $100 per class, per task. Paper filings, while almost never necessary, cost more.
Trademark Registration – Intent to Use Application Process and Associated Costs*
- File application with U.S. Patent and Trademark Office (“PTO”) via “eTeas,” (PTO electronic filing). Filing date becomes default date of first use, aka “priority date” ($500 flat fee)
- Receive filing receipt from PTO (day of filing) (included in flat fee)
- Examination period -- receive and respond to correspondence (office actions “OA”) from the PTO (can take six to eight months from date application is filed to receive OA) (can amend to allege use during this time, but doing so will back up priority date to the first use of the mark). Applicant may be required to Amend to Allege Use if there is a transfer of ownership in the mark / need for assignment of mark, as ITU applications are NON-ASSIGNABLE) ($200/hourly fee)
- Application is Approved for Publication (usually eight to fourteen months after filing application)
($100 flat fee) - Mark is Published for Opposition (usually one to three months after mark is approved for publication) (Mark is published in the “Official Gazette,” a publication of the U.S. Government. Anyone who believes that they would be “damaged by registration of the mark” has thirty (30) days from Publication of the mark to file an Opposition to the registration of the mark)
- BLACKOUT PERIOD
(CANNOT file Amendment to Allege Use or Statement of Use during this time) (usually one to five months) - Notice of Allowance is issued (usually one to four months after mark is Published for Opposition)
($100 flat fee) - A Statement of Use (“S-O-U”) or Request for an Extension of Time by which to File the S-O-U is due 6 months from the date of the Notice of Allowance. The PTO charges a S-O-U filing fee of $100.00 per International Classification. An applicant can file up to 5 Requests for Extension ($150.00 per Class), though the applicant must show cause after the first 2 requests ($300 flat fee per S-O-U or Extension)
- FEDERAL REGISTRATION!! ($100 flat fee)
*All fees are for electronic filing of up to three classes per application. For additional classes please add $100 per class, per task. Paper filings, while almost never necessary, cost more
Conclusion
Your product and company name may be your business’s most valuable assets. The Coca Cola brand alone is currently valued at $70.45 BILLION dollars!! Your product and company names are how your customers identify and distinguish your products and services from that of your competitors. Since U.S. trademark rights are governed by a system of “priority,” the first person / entity to use a mark in “interstate commerce” can prevent everyone else from using the same or similar mark for the same or similar services, nation-wide. Accordingly, it is very important to make sure that your marks are not too similar to that of your competitors or you may find yourself accused of trademark infringement. While the search and registration process can be costly, especially for a start-up company, it is always better to act diligently, and pro-actively in the beginning, rather than scrambling to do damage control down the road. Trademark infringement disputes are ALWAYS more costly than the search and registration process, ALWAYS!
NOTE:
If you have yet to choose a trademark, or if your trademark search reveals that you need to choose a new mark, please refer to the Strengths of Trademarks fact sheet.
