Summary of U.S. Trademark Filings
for Attorneys, Agents and Associates

New Filings

Our fee for services for a single-class application in the United States Patent and Trademark Office (USPTO) is $1250.00. The fee includes government charges as well as our responses to Office Actions. For each additional class, our fee is $525.00. Opposition proceedings, concurrent use proceedings, consent agreements and the like are not included in the foregoing fees.

There is no extra charge for filing an application on multiple bases (e.g. use, intent to use, foreign application, and foreign registration); or for a design or color mark.

In order to file an application, we need the following information:

  1. The owner’s legal name, place of formation or citizenship, and legal address;
  2. If the mark is a design, a black and white JPG image. We do not generally recommend registration of design marks in color unless the color is distinctive. (More information)
  3. A description of the goods/services for which registration is sought. Please note that the USPTO now requires applicants to comply with the 11th Edition of the Nice Agreement, along with the USPTO amendments. (More information)
  4. The filing basis:
    1. For applications based on use or intent to use: Indicate whether the mark is in use in the United States, and if so, provide:
      1. the date of first use anywhere;
      2. the date of first use in the U.S., and
      3. a specimen showing use of the mark in each class of goods/services for which application is sought.

      If the mark is not in use, and not filed on the basis of a foreign priority, then it will be filed on the basis of intent to use;

    2. For foreign-based applications, provide all foreign application or registration priority information. (More information)

Once you provide responses to #1 – #4 above, we will prepare “confirmation instructions” detailing the proposed filing. We will also conduct a limited search for identical trademarks in the USPTO and will notify you if there are any obvious bars to registration. Full availability &/or registrability searches are done by specialized search companies, which we can recommend.

For an explanation of the registration process in the USPTO see our flowcharts.

Note regarding applications based on intent to use: Before intent-to-use trademark applications can be registered, they must be converted to a use basis. If the mark is not already in use following the USPTO’s approval, extensions of the intent-to-use application must be filed every six months until use commences. The cost for each extension or allegation of use is $400.00 for a single class and $225.00 for each additional class. The fees include government charges and our services.

Office Action Responses (Madrid Protocol Only)

Our $500.00 flat fee rate for Madrid Protocol filings covers non-substantive office action refusals and domestic representation as Attorney of Record. It does not include oppositions, cancellations, or litigation involving third parties. We will, without charge, review any substantive USPTO Official Action refusing registration of a U.S. designation under the Madrid Protocol, and offer our recommendations on how to proceed. You only need to provide us with the US Serial Number or International Registration Number and ask for our recommendations.

Maintenance and Renewal for

United States National Registrations

In order to file Maintenance (during the sixth year of the initial term) and Renewal (every ten years) Applications, we need the following information:

  1. The registration number for the Mark;
  2. A specimen (evidence) showing use of the mark for at least one of the goods and services in each class of the registration;
  3. Is there an ownership change, and if so, provide the new owner’s legal name, place of formation or citizenship, and legal address as an assignment will have to be filed prior to filing the maintenance or renewal; and
  4. If it is a maintenance application during the sixth year, confirmation that the mark has been in continuous use for at least five years from the registration date.

Typically, a registered mark is in use for at least five years from the registration date, and a combined affidavit of use and incontestability is filed together conferring additional rights in the mark.

Note: that the primary issue encountered in maintaining and renewing trademarks in the United States are proper specimens showing use of the mark in commerce in the United States for the goods and services listed in the registration. The specimens must show use of the mark as registered and how the mark is actually used for the goods and services. We will advise you without charge as to the evidence necessary to comply with USPTO requirements. We also note that the USPTO is regularly “auditing” maintenance and renewal applications requiring the submission of specimens showing use on several and sometimes all of the goods and services listed in the registration.

The cost to file a combined Maintenance application for United States National Registrations is $700.00 for the first class and $400.00 for each additional class, inclusive of both the Section 8 and 15 government filing fees. If only a Section 8 affidavit of use filing is required, then the cost is $500.00 for the first class, and $200.00 for each additional class.

The cost to file a Renewal application for United States National Registrations is $825.00 for the first class and $550.00 for each additional class, inclusive of both the Section 8 and 9 government filing fees.

Maintenance and Renewal applications can be filed within the six (6) month period after the expiration of the sixth year, or tenth year, upon the payment of an additional $200.00 per class grace fee.

Maintenance and Renewal for US Madrid Protocol Registrations

In addition to the filing of renewals with WIPO, it is necessary that for all United States designations under the Madrid Protocol that a Section 71 affidavit of use be filed during the sixth year of the first term of the registration and every ten years at the time of renewal.

We require: The registration number (or international registration number) for the Mark and a specimen (evidence) showing use of the mark for at least one of the goods and services in each class of the registration. (Please see “Note” in previous section. Additionally, all changes of ownership for Madrid registrations is done through WIPO.)

The cost to file a Section 71 affidavit of use is $500.00 for the first class, and $200.00 for each additional class.

Recordation of Title Changes

To prepare and file an assignment, change of name, merger, etc. the following information is required:

  1. For assignments, the Assignor’s (or Seller’s) and Assignee’s (or Buyer’s) full legal names, place of formation or citizenship, and legal addresses. Also, if known, the names of the persons who will sign on behalf of the Assignor and Assignee, and such persons’ official titles.
  2. For all changes (including assignments), the properties that are involved (e.g., the registration numbers or application serial numbers of the marks);
  3. The date of the transaction, if different from the date of signing; and
  4. Any other information that may be relevant to our understanding the requested changes.
  5. For name changes, we will need a copy of the government documents effectuating the name change that show the name before and after, as recorded in the official records.

If you have any questions about the proper documentation, please ask.

The charge for recording title changes is $440.00 for the first trademark, and $100.00 for each additional trademark. If there are many properties to be assigned, we will discount our rates accordingly. We do not need original signed documents. A fax, PDF or scanned image will suffice for filing purposes. It is recommended that a “short form” assignment is filed at the USPTO rather than a document memorializing the full transaction.

These can be turned around and recorded very quickly, often in one day.