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.

Join Me for a Webinar: Policing and Protecting Copyrights on the Internet

Hello there!

I know long time no hear. I have been so busy working and the time I previously had to update this blog as been next to zero. But I did want to let you guys know that I am co-presenting a very timely and informative Webinar entitled, "Policing and Protecting Copyrights on the Internet." My co-presenter and I will share information on the following:

1. Unprecedented theories of secondary liability that seek to hold banks, credit card companies, advertisers and search engines liable for copyright infringement—even if the underlying infringement is based on user-generated or unrelated third party content.

2. Battles over the meaning of "display" under 17 U.S.C. sec. 106 in the Internet context.

3. Fair use as a doctrine, an affirmative defense or a substantive limit on the scope of a copyright-holder's right to exclude.

4. Technological solutions to copyright infringement and the rise of digital rights management.

I will specifically discuss the Fair Use exception to the Copyright law. I will also discuss Digital Rights Management (DRM) software and open source software as it relates to copyright infringement and protection. I am thrilled to share my knowledge on these pressing issues.

If you are interested in listening in on this Webinar, the host company, Strafford Publishing is offering a 50% discount to all of my colleagues, readers, and affiliates. Simply click the following link to register: https://www.straffordpub.com/store/cart

I hope you can attend!

Edouard Lambelet Founder of Paper.li discusses Copyright Infringement and Fair Use with IPLAW101

Happy New Year!

I hope your New Year started off awesome and wonderful things happen for you in 2011.

Have you heard of the service Paper.li? Well it is the new rage on Twitter and it is beginning to take off. Paper.li allows users to organize links shared on Twitter and now Facebook into a newsletter style format. For example, a Twitter user can create a free paper.li account and designate specific Twitter users' links, usually based on subject or topic, into their own online newspaper. Sounds like a pretty amazing service. However, I observed that the newspaper does not only post the links to the content but a portion of the content published in those links. Sometimes the amount of content is a sentence or two. However, other times the service may publish a portion of content that equals a small paragraph.

I had an opportunity to interview one of the founder's of Paper.Li, Edouard Lambelet, regarding how the service works; benefits of paper.li; and possible copyright challenges. Below is what he had to say:


IPLAW101: Mr. Lambelet thank you so much for taking time out of your busy day to talk to IPLAW101 about paper.li.

Edouard: No problem. We enjoy talking to content producers. Content producers are the leaders in social curation and this is what our service is about.

IPLAW101: How did you come up with the concept of Paper.Li?

Edouard: We just wrote a blog post on this very question. On the blog we gave an in depth analysis of the need for paper.li. Paper.Li was created to fill the void in content curation. Basically, there is so much information being shared on Social Media platforms and it can be overwhelming. Paper.Li acts as a filter and organizes content by semantics and ranking. Through this system we are able to arrange content via topics and relevancy to the user.

IPLAW101: I have used the service and had my content re-published in other newsletters. I was a bit concerned about the amount of content that was published in the newsletter. The service re-publishes links but also a portion of content from those links. What is your reasoning behind re-publishing content and not just links to content? Are you concerned about Copyright challenges?

Edouard: Well the re-publishing of a small portion of the content contained in the links makes it easier for users to read and discern what content to read and in what order relevant to them. Also the re-posting of a snippet of the content provided by links is pretty much the standard now in social networking platforms. Twitter and Facebook are currently providing the same type of service to their users.

In addition, we do not re-publish links from private accounts on either Twitter or Facebook. We only re-publish links from public accounts.

IPLAW101: I think the difference in paper.li's service is that the user is able to create their own newspaper and acts as a publisher of the content whereas on Twitter and Facebook the user is freely sharing their content and links. So initially it seems as if the user may be publishing content without the owner's permission. I had a Twitter debate regarding paper.li and a fellow Twitter user suggested maybe your service can require users to send a link to content creators asking their permission to re-publish portions of their content. Have you ever considered making this an option with your service?

Edouard: Actually no. We have never received any complaints about the re-publishing of a portion of content via links. As a matter of fact, users have raved about the service because it boosts blog traffic. Users generally experience a tremendous boost in blog traffic.

IPLAW101: Yes, I have heard this from other Paper.Li users and they all are amazed about the jump in blog traffic.

Edouard: In addition, if a content producer does not want their content included in a paper.li newspaper, we do give them the option to opt-out of the service. Our goal is to be the leader in social curation and help users of share and consume content in an highly organized fashion.

IPLAW101: Thank you for your time.

Edouard: Thank you.

I really did appreciate Edouard giving me this interview at 10pm Paris time. He was very open to discussing the platform. Essentially his view is that the benefits of paper.li outweighs any possible copyright issues.

My take:

As I have previously discussed on this blog, copyright infringement occurs when:

Copyright Infringement occurs when another unlawfully copies, sells, displays or performs a copyright owner's work without their express permission. However, in some instances, copying a copyright owner's work without their permission is allowed. This is called the Fair Use exception. Specifically, an infringer of a copyright can argue Fair Use if they meet one of the following criteria:

1. the purpose and character of the use is for non-profit or non-commercial purposes;
2. the nature of the copyrighted work is artistic and benefits the public;
3. the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole; and
4. the effect of the copying upon the potential market for or value of the copyrighted work is minimal.

Paper.li's publishing of a portion of the copyright owner's work without their permission arguably falls under number 3 of the Fair Use exception, the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole. To be fair to paper.li, re-publishing only a couple of sentences may very well qualify as Fair Use. Plus the U.S. Courts have not been very definitive about what portion of a copyright work is Fair Use or Copyright Infringement. These cases are usually decided on a case by case basis. For example, a few sentences of an article may be copyright infringement if it contains the heart of the work. Harper & Row, Publishers, Inc. v. Nation Enters, 471 U.S. 539 (1985). In the alternative, a substantial portion of a work may be Fair Use if the use is a parody or criticism. Campbell v. Acuff-Rose Music, INc., 510 US 569 (1994).

So far the service has not received any challenges and user's find it beneficial to their blogs. Paper.li has over 2 million users and has just raised another $2.1 million in financing to expand the service globally. So paper.li is having a great deal of success. I will be watching to see how the service grows and deals with issues as they arise.