Basic Information About Trademark Registration

It is not necessary to register a trademark in order to establish the exclusive right to use a protectable mark. Trademark rights can arise without registration simply by using a mark in the United States. However, these "common law" rights are usually limited to the geographic areas where the mark is used and advertised. As long as you are the first to use the mark in connection with your products, and no other person has filed an application to register the same or similar mark, you are generally entitled to exclusive use of that mark in the geographic area in which the mark has been used.

Nonetheless, registering the mark at the U.S. Patent and Trademark Office ("PTO") provides many substantive and procedural advantages. For example, a federal registration provides a presumption of validity and ownership of the mark, allows the possibility for acquiring incontestability five years after the registration has issued and, of great significance, provides constructive notice to others of your claim to ownership of the mark, thereby giving you nationwide rights even if use of the mark is confined to part of the United States. This latter point is particularly important since the mark will appear in the results of searches conducted by those who are trying to determine whether a particular mark is available for use.

Before going to the expense of filing a trademark application, we generally recommend conducting a comprehensive search to determine the mark's availability for use and registration in the U.S. The comprehensive search encompasses marks registered and pending in the PTO, state trademark registrations, and common law marks and names (marks and names that are in use but not registered). This often avoids needless expense and the inconvenience of changing a mark after the mark has been used because of the subsequent discovery of another's prior rights in the mark. The cost for such a comprehensive search and written legal opinion is approximately $800-$1,500.

Before we conduct a comprehensive search, we will generally conduct a "knockout" search of the PTO and state trademark records during an Internet screening search. This preliminary searching is designed to locate identical or virtually identical marks that would clearly preclude use and/or registration of the mark searched. If a problem mark is revealed by the knockout search, the cost of a comprehensive search and opinion will be saved. Knockout searches typically cost between about $230-300 per mark, and this cost is included in the estimate given above for a comprehensive search and opinion.

If, on the other hand, your mark has been used for a significant period of time throughout the United States without objection from others, the need for a comprehensive search may not be as great. In such cases, we could conduct only a thorough search of the PTO records to determine if the mark is available for registration. The cost for such a PTO search and legal opinion is approximately $500-$750. If you will not use the mark in the United States for a significant period of time, or if there is some question whether the mark will be used in the United States at all, you may decide to conduct only a search of the PTO records now, and later conduct a comprehensive search if and when the mark will be used in the United States.

If you should decide to register your mark, Our the fee for these services is generally around $300-700 plus a government fee of $275-$325 for each class of goods or services in the application. If the mark contains a design or stylized lettering, then we may also need to obtain a formal draftsman's drawing unless you can supply us with high quality prints or camera-ready art. A formal drawing usually costs $50-$100. Our incidental costs, such as postage, copying, and facsimile transmission will then also be added to these fees.

In order to minimize the initial cost of an application, it is possible to submit the application with the government fee for only one class. In that case, the Examining Attorney will then examine just one class of goods or services and require that balance be paid in six months or that the goods and services in any unpaid classes be canceled from the application.The cost for prosecuting the application is more difficult to estimate since it depends upon the basis for registration and what, if any, impediments to registration are raised by the Patent and Trademark Office. Nonetheless, here is a rough estimate of the costs that would likely be incurred under some of the scenarios that might arise during prosecution.

If the application is approved for publication immediately, the prosecution costs would likely be under about $500, provided that the application was not opposed following publication of the mark. If only formal or technical matters were raised by the Trademark Office, then the cost of prosecution would likely be in the range of $500-1,500. However, if a substantive refusal of registration were encountered, such as the citation of a previously registered mark or a refusal based on the descriptiveness of the mark, the fees could be considerably higher.

As a general rule, applications based on intent to use or a foreign application are more expensive to prosecute, since such an application will not mature into a registration until use of the mark has begun and a statement executed by the applicant submitting evidence of that use has been filed. Therefore, in addition to the costs involved in responding to any official actions, there are also charges associated with the filing of the evidence of use and/or any requests for extension of time which may be required. Our fees for compiling the information and materials needed to allege use and preparing the necessary document for execution by the client are usually in the range of $300-500, plus a government fee of $100 for each class of goods or services.

Although use may be alleged at any time during prosecution, if use of the mark in commerce has not begun by the time the application is in condition for acceptance, then the applicant will then have a specified time period within which to make use of the mark. The maximum amount of time available is three years from the issuance of the Notice of Allowance, measured in six-month increments. Each request for a six-month extension of time must be signed by the applicant and accompanied by the payment of a $150 government fee per class for each extension requested. Our fees for preparing and filing an extension request are usually about $260-360, plus the $150 government fee for each class of goods or services. We may also recommend filing one extra request for extension together with the evidence of use in order to preserve the applicant's right to file substitute evidence if the evidence initially filed is not accepted. Unlike the issue fees for U.S. patents, there is no separate government fee for trademark registration.

Filing requirements vary depending on the basis of the application. An application to federally register a trademark or service mark may be based on:

• Actual use of the mark in connection with goods shippedor services rendered in the United States;
• A bona fide intention to use the mark in connectionwith goods/services in the United States in theordinary course of business;
• A foreign registration for the mark;
• A foreign application for the mark, if filed within the six months preceding the U.S. filing; and/or
• A combination of these.

An application based on actual use requires specimens showing how the mark is currently used in connection with the goods or services for which use is claimed, as well as the date of first use of the mark. An application based on intent-to-use does not require these items at the time of filing, but a registration will not issue until use of the mark has commenced and specimens and dates of use have been submitted. Under usual circumstances, if the applicant continues to have a bona fide intention to use the mark and is engaged in ongoing efforts to use the mark in commerce, an applicant may extend the period for proving use up to three years after the mark has been allowed, i.e., after the PTO has approved the application and the application has cleared the publication period. Thus, if these conditions are met, an applicant will have at least 3½ years and more likely 4-4½ years after the filing date of an intent-to-use application within which to commence use of the mark necessary to obtain registration.

An application based on a foreign registration will require a certified copy of the registration (and an English translation, if applicable, signed by the translator). An application claiming priority from a foreign application does not require a certified copy of the priority application, but the U.S. registration will not issue until either 1) the foreign registration issues and a certified copy of the registration (and English translation, if necessary) is filed with the PTO, or 2) the mark is used in the U.S. and evidence of that use is filed with the PTO. An application based on either a foreign registration or application must also contain a statement of the applicant's bona fide intention to use the mark in the United States.

Any application may be filed unsigned as long as a signed Verified Statement is filed later. A faxed copy of the signed application or Verified Statement may also be submitted, and does not need to be supplemented by the original executed application. To qualify as an appropriate signatory, the person signing must 1) have legal authority to bind the applicant or firsthand knowledge of the applicant's use or intent to use the mark; and 2) have actual or implied authority to act on behalf of the client. Failure to correct a paper that is signed by the wrong person may leave any resulting registration vulnerable to cancellation.

Preferably, the "R" in a circle ("®") notice symbol should accompany a trademark after it has been registered with the U.S. Patent and Trademark Office (USPTO). Failure to put the notice on a registered trademark can greatly reduce the possibility of recovering significant damages if it later becomes necessary to file a lawsuit against an infringer. However, the ® symbol may not be put on a mark unless it has been registered with the USPTO. Nonetheless, many people like to put a "TM" (or "SM" for service mark) next to their unregistered "common law" trademark or service mark in order to let the world know that they are claiming ownership of it. But it is not legally necessary to provide this type of notice; the use of the trademark or service mark itself is the act that confers ownership.

While we can not guarantee the legal advice by others, the following Internet websites contain additional information that may help you in discussing your intellectual property rights with a qualified attorney.

"General Information Concerning Patents" and other publications are available from the U.S. Patent Office at http://www.uspto.gov/web/menu/pats.html and http://www.uspto.gov/web/offices/com/iip/index.htm

"Basic Facts About Trademarks" and other information is available from the U.S. Trademark Office at http://www.uspto.gov/web/offices/tac/doc/basic/ and http://www.uspto.gov/web/offices/tac/tmfaq.htm

"Copyright Basics" and other information is available from the U.S. Copyright Office at http://www.loc.gov/copyright/circs/circ01.pdf and http://www.loc.gov/copyright/circs/index.html#circ1

"Section 337 Investigations at the U.S. International Trade Commission" is available from the U.S.I.T.C. atftp://ftp.usitc.gov/pub/reports/studies/PUB3027.PDF

"U.S. Customs and Protection of Intellectual Property Rights" is available at http://www.customs.ustreas.gov/impoexpo/impoexpo.htm

"Invention Promotion Firms" are discussed by the U.S. Federal Trade Commission at http://www.ftc.gov/bcp/conline/pubs/services/invent.htm

The U.S. Patent Office's U.S. Patent Database is searchable at http://www.uspto.gov/patft/index.html

The European Patent Office's Worldwide Patent Database is searchable at http://ep.espacenet.com/search97cgi/s97_cgi.exe?Action=FormGen&Template=ep/EN/home.hts

The U.S. Trademark Register is searchable at http://tess2.uspto.gov/bin/gate.exe?f=tess&state=pj9ibb.1.1

The Franklin Pierce Law Center's "Intellectual Property Mall" provides a very comprehensive set of links at http://www.ipmall.fplc.edu/. Various intellectual property statutes are available through Cornell University Law School's "Legal Information Institute" at http://www.law.cornell.edu/topics/topic2.html#intellectual and links to other intellectual property resources are available through the "FindLaw" Internet Search Engine at http://www.findlaw.com/01topics/23intellectprop/

The current "U.S. Patent And Trademark Office Fee Schedule" is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee1999.htm