Trademark Registration Costs: Is It Worth It?

Hello everyone,

I receive dozens of calls per week from individuals wanting to register a trademark with the USPTO.  However, once I give a potential client an average price quote to begin and complete the trademark process, many are hesitant to proceed.  They state, "well this company only charges X amount of dollar to file a trademark" or "I can just file the application myself and save on the legal fees."

The trademark process is very complex and unless you know what you are doing, it can become very difficult or near impossible to do without assistance.  As I have said many times before, a large percentage of clients I receive have attempted to do it alone or hired a company such a Legal Zoom and the USPTO has sent them an office action they can not understand.  Common reasons the USPTO will reject an application are:  1) there is a conflicting priority trademark or 2) the specimen is insufficient.

Trademark registration costs

On average a good trademark attorney charges between $2000 and $3000 to initiate and complete the federal trademark registration process.  Why?  Here is a breakdown of costs:

Comprehensive Search

If you have a logo and a name that needs protection, trademark search companies such as Corsearch, charge around $1000.00 to deliver a comprehensive search.  A comprehensive search results in a nationwide search of various state and federal databases such as company names, DBAs, state trademark databases, USPTO and Library of Congress databases to discover any competing or priority trademarks.  They will also search Dun and Bradstreet and Internet domain names.

Trademark registration companies will not do a comprehensive search and will simply do an Internet search and proceed with registration.  What can you expect for only $299?  I am always adamant my clients do a comprehensive search because an Internet search will not find the mom and pop store with a priority trademark that has been operating for 40 years and does not have an Internet presence.

Legal Fees

Legal fees to review the results of a comprehensive search; draft a search opinion letter regarding your priority trademark rights; and to complete the USPTO application range between $1000-$1500.  Of course these fees depend on the attorney's hourly rate and whether there is a junior attorney working on the application and a partner needs to review it.  In that situation, the legal fees could be significantly more.

USPTO filing fees

Registration fees per trademark are between $275 and $325.  However, this amount depends on how many classifications are chosen in the registration process.  Classifications are based on what goods or services the trademark will protect.  I always like to use the BBQ restaurant as an example.  If you want to trademark ZZZ BBQ restaurant and also sell bottled ZZZ BBQ sauce and t-shirts, you would register the mark under three classifications: restaurant services, sauces, and t-shirts.

As you can see, the actual legal fees made on a trademark registration is on average 50% of the actual trademark registration fee.  The above process works for me and I have been very successful in registering clients' marks.

I always tell potential clients the following when considering federal trademark registration:  you will either pay $2500-$3000 now or pay thousands more in fighting a trademark infringement action; fighting for your trademark; or rebranding because you spent funds on branding materials and you suddenly discover you have to choose another trademark.

I hope this information was helpful.

Trademark Misappropriated? What Are Your Next Steps?

Hello:

Sorry for the long hiatus.  I have thankfully been very busy with clients. Finding the time to write on this blog has been a chore.  Through my work experiences for the past 6 months, I have some helpful intellectual property law tips I would like to share.

Here is the scenario.  You wake up one morning and you find out that a major brand, publication, or celebrity is using your trademark.  You have been using it for 5 years before this brand recently starting using it, but you have never went through the formal trademark registration process with the USPTO.   You wonder, do I have any trademark rights without USPTO registration? & How can I reclaim my trademark from this larger more powerful company?

1. Trademark Rights.

There are two types of trademark rights:  common law and federal.

Common law right.

Any person or business entity that is first to use a unique name, logo or phrase (trademark) that identifies a product or service available for public consumption, has a common law trademark right.  This right attaches regardless if the trademark is registered with the USPTO.  There are limitations to this right.  A common law trademark right only is applicable to the region where the trademark originates or is sold.

Federal trademark right.

A federal trademark right is granted by the USPTO and there is a registration process.  Once a trademark receives an official registration, it is valid in all 50 states.

Conclusion:  Owners who are first to use non-registered trademarks do have priority to use those marks exclusively in their state or region.

2. How Do I Assert My Common Law Trademark Rights Against the Larger Company?

The most effective way to assert your trademark rights against any infringer is to put them on notice they are infringing your mark.  I have settled 90% of my client's trademark disputes through a cease and desist letter.  Although a common law trademark right only gives the owner priority to use the mark in the owner's region, a common law right can stop the company from selling an infringing product or providing a service in that region.  Also if the larger company attempts to register the mark with the USPTO, the USPTO can bar registration if they find the competing priority common law trademark.   Unless the larger company can prove the common law trademark owner agreed to allow the company to use the mark or the common law trademark owner abandoned the mark, the USPTO will be very hesitant to allow registration.

In sum.....

As I have discussed before cease and desist letters are very important in policing and maintaining your trademark whether it is registered or not.  Trademark owners can lose their trademark rights if they allow others to use or infringe the mark without defending it.  How does this happen?  A company that really wants to own the mark and register it with the USPTO can petition the USPTO and submit evidence the mark was abandoned through non-activity (when an owner ceases using a mark) or non-defense of infringement (not expressly putting others on notice of their infringement and demanding they cease).  

Trademarks are valuable intellectual property. Defend and protect them wisely.