Trademark Protection

Michael A. Bondi

Trademark Selection

Selecting a unique name for your product or service frequently plays an important role in the ultimate commercial success of the product or service. While selecting a mark that describes characteristics of that product or service, such as SPARKLE for glass cleaner, may assist in obtaining initial recognition, it is not possible to prevent other companies from using the descriptive terms to describe features of their products. On the other hand, selecting an arbitrary mark, such as XEROX for copying equipment, requires more effort to develop consumer recognition, but can result in the creation of more valuable rights.

As part of the selection process, we usually recommend that a search be conducted to determine whether there are any other marks that may potentially cause a conflict. Trademark searches thereby enable you to avoid investing time and money in a mark that infringes another party’s rights. On the other hand, if the mark is already in use, a search is usually not recommended. There are two different types of searches.

  1. The first type is an on-line database search that we conduct from our offices. In this type of search, we review federal registrations, pending federal applications, and state registrations. It is also possible to review company name databases, domain name registrations, and electronic yellow pages. The costs associated with conducting this type of search and reviewing the search results are typically between $600 and $800.
  2. The second type is a full trademark search, which is conducted by a professional search firm. This firm reviews federal and state trademark databases, company name databases, product databases, domain name registrations and other electronic sources. The search firm then compiles the results into a detailed report. The costs associated with conducting a full trademark search and preparing a detailed opinion reviewing the search results is typically between $900 and $1,200.

Costs Associated with Obtaining a Federal Trademark Registration

While obtaining a federal trademark registration has numerous benefits that are detailed below, there are costs associated with not only preparing and filing the application, but also examining the application. Total costs that are incurred in securing a federal trademark registration are typically between $1,000 and $2,000.

Because of these costs, obtaining a federal trademark registration may not be warranted for all products or services. Please contact us if you want to discuss the appropriateness of securing federal trademark protection in more detail.

Our service fee for preparing and filing an application to register a mark with the U.S. Patent & Trademark Office is $650. There is also an official filing fee of $325 that is payable to the United States Patent & Trademark Office (USPTO) for each class in which registration is sought.

Additional costs are incurred after the federal trademark application is filed. While costs incurred during the examination stage are typically less than the costs associated with filing the application, these costs depend on the issues raised during examination.

If an objection to registration (known as an Office Action) is raised during the examination stage, we will need to prepare and file an appropriate response. When an Office Action is received, we will forward it to you along with our comments regarding responding to the Office Action. If you request, we can also provide you with an estimate of the costs associated with preparing the response.

Advantages of Federal Trademark Registration

Registration is not required in the United States to have enforceable trademark rights. Rather, trademark rights arise from actual use of a mark in connection with products or services. This type of rights is referred to as common law rights.

Even though it is possible to acquire common law trademark rights through use, there are several advantages to federal registration with the USPTO. These advantages include:

  • Registration on the Principal Register of the USPTO is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the exclusive right to use the mark.
  • Nationwide constructive notice of registration provides rights against others who subsequently adopt the mark in good faith. Federal registration also precludes geographic expansion of nonregistered parties.
  • Ability to stop importation of products bearing marks that would infringe the registered mark by recording the registration with Customs.
  • Federal jurisdiction for trademark infringement actions without regard to diversity of citizenship or amount in controversy. Federal remedies for infringement including temporary and permanent injunctions, damages, recovery of profits, and destruction of infringing items.
  • Counterfeiting a federally registered mark is a criminal offense.
  • Once a mark has been used continuously for five years following registration on the Principal Register, it is possible to request the registration become incontestable. This status precludes others from challenging the registration on the basis of the mark being merely descriptive.
  • The only remaining ways to challenge the registration are that the mark is later abandoned, becomes generic, or the registration was obtained by fraud.

Types of Applications

The two primary bases for filing federal trademark applications are based upon actual use and intent to use. To file an application based upon actual use requires that the mark be used in commerce. Token use is not sufficient to justify filing based upon actual use.

To enable companies to effectively reserve marks prior to introduction of a product or service, it is possible to file an application based upon an intent to use. This type of application thereby enables a company to ascertain whether the mark is registerable prior to launching the products or services. Intent to use applications cannot mature into registrations until the mark is actually used and evidence supporting such use is filed with the USPTO. Additional official fees and services fees are associated with preparing and filing the necessary documents to substantiate use of the mark.

Trademark Notice

Once a mark is registered by the USPTO, the designation “®” should be used to indicate to persons seeing the mark that the mark is registered. There are significant civil penalties for using the registered trademark designation before a registration is obtained. Prior to registration, the designations “TM” (for trademark) or “SM” (for service mark) should be used to indicate that rights are claimed in the mark.

Foreign Trademark Registration

In contrast to the United States where trademark rights derive from use, trademark rights in most foreign countries arise upon application for registration. Unlike patents, there are no strict time limits for filing trademark applications in foreign countries. However, it is advisable to file a foreign trademark application within six months of the United States application so that the foreign application can claim priority to the United States application.

Factors to be considered in deciding whether to seek trademark protection in a particular country are the filing cost, the value of the country as a market for your company’s products, and the likelihood that another party, or even a distributor, would adopt or register the same or a confusingly similar mark.

Foreign trademark application filing fees generally range from $800 to $2,500 per class. In addition to the charges from our foreign associates, there will also be charges with our work in preparing appropriate papers for filing. Our service fee for each application is typically about $600. Similar to United States trademark applications, any subsequent work on the prosecution of the foreign applications will be billed when the charges are incurred.

Domain Name Registrations

We would also like to remind you of the potential importance that domain names play in establishing strong protection for your trademark, as well as market acceptance for your product’s service. In particular, we recommend that your company evaluate whether it is desirable to register one or more domain names corresponding to this trademark as soon as possible after the trademark has been selected, as it is often considerably less expensive to register the domain names rather than having the domain names requested by a third-party company who profits from the business of registering and then reselling domain names. If your company does not currently work with someone for registering domain names, we would be glad to suggest available options.