Trademarks identify to the public the source of particular goods or services. A trademark is any distinct word, phrase, symbol or picture, or combinations thereof, that identifies and sets apart the goods of a specific business or organization. It is commonly referred to as a mark, and is also used sometimes used to describe a service mark (which covers services instead of goods). Favorable consumer perception of a trademark generates goodwill in the mark, which may be a major source of business value for the holder of the mark. Federal trademark rights arise through use of a mark in commerce. However, like federal copyright registration, a federally registered trademark carries with it several very significant advantages. For example, it creates the presumption that the registrant has the exclusive right to use the mark in commerce in association with the specified goods and/or services. And, except for a limited number of exceptions, after five years of continuous unchallenged use a registered trademark becomes incontestable. Furthermore, it enables the registrant to recover attorneys fees in addition to injunctive relief and other monetary damages (which may be trebled if an infringement is found to be willful) in a trademark infringement action.
Prior Searches for Conflicting Marks
In order to obtain federal registration of a trademark, the mark must not be confusingly similar to other preexisting registered or unregistered marks or trade names previously used in the United States in association with the same or similar goods and/or services.
Accordingly, prior to seeking federal trademark registration, and similar to a search for conflicting patents, we recommend that a search be conducted to unearth potentially conflicting marks for each mark for which registration is sought. The scope of trademark searches ranges from a cursory search of the USPTO’s online trademark database and keyword searches using popular Internet search engines to a full or “comprehensive” search, both of which are discussed below.
A preliminary search of the USPTO’s trademark database Internet keyword searching is designed to uncover registrations or uses of the exact or very similar marks through quick online investigation. The idea is to eliminate obviously troublesome marks early before expending fees on a full search and/or a trademark application.
A full search is performed by a professional trademark search service and includes a review of a much larger amount of information, including: the USPTO records of registered and published trademarks and applications for registration, including records of cancellations, assignments, abandonments, and oppositions; registrations in the fifty states; and marks listed in trade directories, major cities telephone directories and on the Internet. Troublesome marks may be uncovered in a full search that escape detection in a preliminary search. For this reason, we highly recommend conducting a full search prior to pursuing a trademark application.
A full trademark search costs us about $550.00 per proposed mark and the results of the search are returned in about one week. This does not include attorney time necessary to analyze the report which typically takes one to several hours depending on the content of the report and whether the client request a letter confirming the analysis.
Application Prosecution Costs
The U.S. Government filing fee for a federal trademark application is $325.00 per class, per mark. For example, if a mark were to be filed in two federal trademark application classes of goods and/or services, the filing fee would be $650.00 (i.e., 2 x $325.00).
Prosecution costs (i.e., attorney and paralegal time) are based on our prevailing billing rates at the time we perform the necessary services on your behalf and may vary considerably depending on the nature and extent of services required at a particular phase of prosecution.
The USPTO recognizes two types of federal trademark applications: actual use and intent-to-use (ITU). As their names suggest, an “actual use” application is filed for a mark that has already been used in commerce and an “ITU” application is filed for a mark that has not yet been used in commerce.
An actual use application requires the following information at the time of filing:
- the filing fee of $325 per class of goods and/or services with which the mark is actually used in commerce;
- a description of each of the goods and/or services with which the mark is actually used in commerce;
- a drawing of the mark (for a word mark such as “Kodak”, the drawing would be represented in block letter form, e.g., KODAK; for a logo mark the drawing would typically be an electronic version of the logo image in JPEG format);
- a specimen showing actual use of the mark in commerce for each class of goods and services specified in the application (acceptable specimens for marks used with goods include labels, tags or containers bearing the mark or digital photo images of any of the foregoing in JPEG format; acceptable specimens for marks used with services include printed and/or electronic advertisements or brochures);
- the date of first use of the mark (e.g., the date of first pre-sale advertising or promotion using the mark); and
- the date of first use of the mark in commerce (e.g., the date of first sale or offer for sale of goods and/or services bearing the mark).
An ITU application requires the following information at the time of filing:
- the filing fee of $325 per class of goods and/or services with which the mark is intended to be used in commerce;
- a description of each of the goods and/or services with which the mark is intended to be used in commerce;
- a drawing of the mark (see above); and
- a declaration that the applicant has a bona fide intent to use the mark in commerce.
Where appropriate for either an actual use or an ITU application, the application may also contain an indication of whether it is claiming priority to an earlier foreign trademark application or registration.
Application Prosecution Timeline
A typical trademark application is first examined by the USPTO within about 6-9 months after its filing date. If the application is rejected, the applicant may respond to the first Official Action from the USPTO within six months from the mailing date of the first Official Action. If the application is again rejected following the applicant’s reply, a second Official Action is issued by the USPTO which is followed by another six month applicant response period. Normally, the second Official Action is a so-called “final” rejection. If the USPTO does not indicate its acceptance of the application after the applicant’s reply to a final Official Action, the applicant must either (1) place the application, if possible, into condition for allowance, (2) appeal the rejection to the Trademark Trial and Appeal Board (TTAB), or (3) abandon the application.
If an application is appealed, the TTAB may take up to a year or more to render a decision regarding registrability of the mark.
If at any time during prosecution of the application the USPTO indicates that the application is acceptable, it will then publish the mark. The purpose of publication is to notify third parties of the USPTO’s intent to register the mark and to provide any parties that believe they might be harmed by the registration the opportunity to oppose the registration. If no opposition is filed, the application proceeds to registration.
In ITU applications, registration will only occur after the applicant has filed a “statement of use” and specimens showing actual use of the mark in commerce. If possible, the statement of use and specimens should be filed within six months after the USPTO allows the application. An automatic six month extension period to file the statement of use and specimens may be obtained upon request. And, up to four (4) additional six month extensions may be granted upon a showing by the applicant of good cause as to why it cannot provide the requisite statement of use and specimens.
NOTE: If a mark is used in commerce or if a trademark application for the mark is pending in the USPTO, the applicant may mark the goods or services with the designation “TM”. Once a trademark becomes registered, but not before then, the registrant should use the ® symbol in connection with the mark to indicate that the mark has been registered by the USPTO.