Summary of U.S. Trademark Filings


Applications

We will file and “prosecute” (i.e., handle the various stages of) applications for trademark registration in the US Patent & Trademark Office (“USPTO”) in a single-class for $1500.00. The fee includes the USPTO filing fee, and our responses to any Office Actions that might arise. For multi-class applications, the fee is $1500 plus $625.00 for each additional class. There is no additional charge to file an application on multiple bases, or for color marks or design marks. Our fee does not include opposition or cancellation actions, or third party problems or appeals to the TTAB in response to final refusals to register. Powers of Attorney are NOT required for United States filings.

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

  1. The trademark owner’s legal name, place of formation or citizenship, and legal address;
  2. The Mark (if a design, I need a PURE black and white JPG image. It is now possible to file for color marks, but this is typically not recommended, unless the color is “distinctive,” i.e., has trademark significance);
  3. The goods and services of interest. Please note that the United States now requires applicants to comply with the 10th Edition of the Nice Agreement;
  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 the date of first use anywhere, first use in the U.S., and a specimen showing use of the mark in each class of applied for goods/services. 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. Whether the mark is in use in the U.S., and if so, the date of first use anywhere, the date of first use in the U.S., and a specimen showing use of the mark for the applied for goods/services. If the mark is not in use, and it is not filed on the basis of a foreign priority, then it will be filed on the basis of intent to use; and
    3. Any foreign application or registration priority information.

Please provide responses to #1-#5 and we will prepare “confirmation instructions” detailing the filing.

Searches: As part of our service for filing an application, we will conduct a limited search for identical trademarks in the USPTO and will notify you if there are any obvious absolute bars to registration. Full availability &/or registrability searches are done by specialized search companies, which we can recommend upon your request.

Intent to Use Filings: Applications filed on the basis of intent-to-use must be converted to use in order to register. If the mark is not in use following approval, then an extension must be filed every six months until use commences. The cost for each extension and allegation of use is $400.00 for a single class and $225.00 for each additional class, including government charges.

Maintenance/Renewal

Please provide us with the registration number, and advise if the owner of the Mark has changed since the issuance of the registration. With that information we will tell you exactly what is needed in order to file a trademark maintenance or renewal application. Typically, a single class maintenance application is $775.00, and a single class renewal application is $900.00, inclusive of all services, fees and government charges.

Note: Maintenance applications must filed during the sixth year of the first registration of a mark in the United States. Renewal applications must be filed every ten years. There is a six month grace period, subject, however, to the payment of additional government fees. Proof of use of the Mark at the time of the maintenance and/or renewal filing is required to be submitted with these applications.

Please visit the firm website for more information

Everything can be done electronically between us. Having filed, prosecuted, litigated and maintained trademarks throughout the world for nearly thirty years, we can set flat-fee rates because we know how to secure trademark protection for our clients efficiently. Let us know if you have any questions and we look forward to the opportunity to work with you.