What trademark service package is right for me?
Our Prime Select package is for those that have already commissioned a comprehensive trademark search and/or are highly confident that their mark will be accepted for registration by the USPTO. Our Prime Elite package is for those that want a U.S. Federal trademark search conducted to find marks that could affect their ability to obtain a Federal Trademark Registration. Our Prime Ultimate service package is for those that want a comprehensive trademark search conducted including U.S. Federal Trademarks, international trademarks and U.S. common law trademarks that may be found in social media, domain names and the Internet to gain better assurance that registration or use of their trademark is not likely to be opposed by a third party. The Prime Ultimate service package also provides peace of mind that a second trademark search may be requested at no additional cost if the first trademark is found to have a conflict and/or have a second trademark application filed at no additional cost (except for the USPTO filing fee) if the first trademark application is finally rejected by the USPTO.
Should I file an intent-to-use or a use based trademark application?
By filing an intent-to-use (ITU) trademark application, you can include all goods that you intend to sell in the future. You can then later amend the application to delete any goods you end up not selling when the application has been allowed. If you wait and file a use based application, you can only include goods you have sold in commerce at the time of filing of the application and cannot add any goods to the application after filing. Plus, if you later want to add goods, you will need to file a completely new trademark application. The attorney's fees to file multiple trademark applications are significantly more than for filing a single application even if that application includes multiple Classes of goods. In addition, multiple registrations necessarily multiplies the cost to renew and maintain the registrations.
Who should be the owner of my trademark?
It is typically better for your business to be the owner of the trademark application if it has been formed and is the source of the goods to your customers. If you have not formed a company but would like to proceed with the trademark application, you should identify yourself as the owner. You may later need to license or assign the mark to your new company once it becomes the source of the goods.
How do I choose a trademark that is more likely to be registrable?
It is important to select a strong trademark that is “inherently distinctive.” A strong mark quickly and clearly identifies you as the source of your goods. The stronger your trademark, the more easily you can prevent others from using it without your permission. Strong trademarks are typically creative or unique, setting you apart from your competitors. Thus, strong trademarks are fanciful or arbitrary in nature (e.g., Google, Exxon, Nike, Coppertone). Weak trademarks, on the other hand, can be difficult to register and costly for you to defend because they often do not have the same legal protections as stronger trademarks. Weak trademarks are more descriptive or generic in nature (Work Shoes, Paper Goods, Big Boys Toys, Apple Pie Potpourri, Creamy Yogurt).
Does my company name and my trademark need to match?
No, you can choose a trademark for your goods that is different than your company name. We will then seek your trademark registration for the mark used on your goods. This is a good option if you have already formed your company but are concerned that your company name may be too descriptive or too similar to an existing trademark to obtain a federal trademark registration. You can then choose a mark that is more likely to be registrable.
How do I identify the goods and International Class for my trademark application?
You are advised to conduct a search for your goods via the USPTO ID Manual at https://idm-tmng.uspto.gov/id-master-list-public.html to verify the name of your goods and find the corresponding International Class(s). Simply type in and search for each of your goods individually in the search field provided. If you are able to match your goods exactly, use the same identification in your trademark application filing request. If you are unable to exactly match your goods in the ID Manual, describe them as best you can. You will also be able to tell if your goods are likely to fall into more than one Class, in which case you may be required to pay additional fees and cost if you decide to include more than one Class of goods in your trademark application. You may, however, include any number of goods in your trademark application from the same Class without incurring any additional filing fees or costs.
Should I add all Classes of goods now or wait?
If you do end up with more than one Class of goods, it is more typically cost effective to add all such Classes of goods you intend to sell in your trademark application. Once the application is filed, you are not allowed to add additional goods or Classes. To do so later, requires a new trademark application to be filed. Our fee to add another Class to your trademark application at the time of filing is significantly less than the cost to file a new trademark application.
What should I expect after I submit my request for trademark services?
Upon receipt of your application request form, we will conduct a conflicts check to ensure that we are able to represent you without any conflict of interest with our existing clients. A conflict may arise, for example, if you are seeking a trademark that is confusingly similar to a mark of one of our existing clients. If a conflict is identified, we will promptly notify you. If no conflict is found, we will email our Client Engagement and Fee Agreement to you for signature and a payment link to cover all fees and costs. If you have requested a trademark search, we will conduct the search and email a search report to you. After we receive your authorization to proceed, we will file your trademark application with the United States Patent and Trademark Office (USPTO).
How long will it take to get my trademark application on file?
Upon receipt of your confirmation to proceed with the filing of your trademark application and verification of its content, we will file your trademark application with the USPTO usually within 1 to 2 business days and email to you a confirmation of the filing. If a trademark search has been requested, we will typically send to you the search report within one to three business days.
What happens after my trademark application is filed?
After filing, the USPTO will assign an Examining Attorney to examine your trademark application for compliance with USPTO guidelines and to identify any potentially confusing marks. If no such issues are raised, your trademark application will be published for a thirty day opposition period to give third parties an opportunity to oppose registration. If no such opposition is filed, your trademark application will then be allowed. Upon allowance, we must file a statement of use to demonstrate proof of use of the trademark in commerce. Following acceptance of your statement of use, your trademark will become registered.
Are there any other costs associated with my trademark application after the application is filed?
During examination of your trademark application by the USPTO, if there are any challenges raised by the USPTO or a private party because of noncompliance with trademark laws or confusingly similar trademarks, are response to any such challenges must be prepared and submitted. If you want us to draft a response on your behalf, the cost is typically between $399 and $1399 depending on the complexity of the response required. If your mark is allowed, you will also be required to submit a Statement of Use, which will cost $199 plus the current USPTO filing fee of $100 per Class.
How long will it take to get my trademark registered?
According to the USPTO, current wait times to first examination of your application is about 9 months with average time to registration being about 15 months from the filing date of your application. You can visit https://www.uspto.gov/dashboard/trademarks/application-timeline.html for updated times to first examination and registration.
How do I maintain my registered trademark?
Between the 5th and 6th years after registration, you must submit an affidavit of continued use to indicate that you are still using your trademark. Failure to timely file your affidavit of continued use will result in cancelation of your trademark registration. At that same time, you can also submit a statement of incontestability which affords additional protections for your registered trademark. To maintain your registration after that, you will be required to renew your registration at the 10 year mark and every 10 years thereafter.
