Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.
If you’ve reached this article, you’re very likely mindful about those dubious online trademark services. They’re low cost, and they tend to have bad reviews on online communities like BBB and Yelp. Well, I’m not surprised. I’ve recently had a client who was charged for two international classes ($550 in USPTO fees), but for only one international class the application was actually filed. That’s an outright fraud.
So, now you wonder how IPfever is different. I understand it seemingly has less documentations and lacks fancy charts/diagrams explaining the process. The truth is that IPfever is actually just an online arm of two patent attorneys’ traditional law practice. In other words, though IPfever has online presence, we work like any other law offices with real attorneys except that we have a very different approach to legal fees.
The reason people consider those dubious online services is obviously the cost. When you walk in to a law firm, you’re starting to pay everything you see and interact from there on. The receptionist’s salary? The fancy office furniture? The time you spend in their offices including “free” consultation? All paid by the clients in the end. IPfever attorneys believe attorneys can file a trademark application at a fraction of cost if they work smart.
Not all trademark applications are created equal. Some takes more time and preparation while others may be filed in minutes if not an hour. So, IPfever created this after-the-fact fee structure where clients will not pay unless they are satisfied.
Here’s how it works:
When you request a free consultation, an attorney will contact you and ask you bunch of questions. Of course, you can ask questions, too. But some of those questions will cost money.
For example, if you want to know if you can use a brand name or logo without infringing other’s trademark, or more simply if you can successfully register a brand name or logo with the USPTO, then attorneys will have to do some research to answer that question. These kind of answers will be in a research report that comes with an invoice, which you should pay, theoretically. However, if you feel you’re not happy with the report, then you’re free to walk away.
Other than that, most questions will be answered by your attorney on spot. Some of the questions will take a lot of time answering because you might ask something like “what about this design feature?” There, your attorney will try to guide you through the process of getting a registered trademark based on your specific needs about the cost, timeline, the ultimate strength of registered trademark, and etc. When you say the cost is your top priority, your attorney will lead you to the shortest way, but meanwhile you will be informed about the risks that you’re taking. Sometimes, you are willing to take a risk to save money, and we fully understand.
After that initial consultation, attorneys can give you the estimate of cost for filing an trademark application with the USPTO. This would include all the USPTO fees, and unless your application is initially refused for some reason, that is all you pay for the registration.
If you like what you saw and heard so far, you give your attorney a nod, and a trademark application will be ready in 2-3 business days. Then, you will receive a report of details of the trademark application and an invoice, for the services done so far and the USPTO filing fees. You make the payment, and your application will be filed with the USPTO.
This is not the most straightforward process because more often than not, the first question you ask is how much it costs? Well, the obvious answer is “it depends”. Maybe we can simply say $1,000 per trademark, excluding USPTO fees, like other attorneys. We can certainly do that because the average cost of getting a registered trademark at IPfever is less.
From February 2020 to June 2020, the average cost of getting a registered trademark at IPfever was about $425.
Then, why not just do $500 flat fee? Well, the lowest was $130. What should we say to the client for whom we only spent $130 worth time and resources? We understand the fear of getting unexpected legal invoices, and that is why we always try to provide estimates before we move and also have the “100% satisfaction guarantee”: if you’re not satisfied with the services, you don’t have to pay the invoice. Just let us know what went wrong, and we will try to fix it or simply cancel the invoice.
I hope you find this article helpful, and if you have further questions, simply request a free consultation and include your question there.
By carefully filling out all the required blanks and agreeing to go paperless in communicating with the USPTO, you can reduce your application fees from $325 to $225 (TEAS plus).
RF Standard allows you to enter goods/services description in your own words for a slightly heftier fee, but it is not recommended if you want the examination process to be as quick as possible. If you pick one from the Trademark ID manual (by USPTO), the examiner will unlikely oppose to the propriety of the description.
Not all questions are straightforward. When you’re in doubt, always consult USPTO guidelines. Always consult a professional before making decisions. All you learned today may be a tip of an ice burg.
Updated on 7/10/2020 to reflect name changes in USPTO TEAS forms (from Reduced Fees to Standard Fees). This change was made because non-electronic filing (which required a higher “standard” fee) is not available anymore.Young Jeon, Esq.
It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.
Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.
Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.
Let’s compare these two options.
|Do it yourself||Professional Help|
|Mark||Your choice of wording and design||Likely a better wording and design|
|Registration||online trademark search/registration||via your representative|
|Cost||USPTO fees + $100 commercial service fees||USPTO fees + up to $2,000 attorney fees + design cost|
Trademark registration is not too complicated.
Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.
USPTO offers an online application form through TEAS (Trademark Electronic Application System).
There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.
Let’s take a look at an interesting story:
By the time Apple Inc. debuted iPhone in January 2007, the prefix “i” had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.
Lesser known than Apple, however, there was a startup called InfoGear Technology Corporation, which developed an internet phone technology, called “iPhone.”
There is a “strong mark” and a “weak mark”. You don’t need to know all legal distinctions as to different types of marks, but you want to have a strong mark, right? Here’s a shortcut to get to the goal.
When it comes to trademark (or servicemark), brand names, symbols, and logo designs are the first things to come to your mind. However, there are other types of trademarks that are protected. For example, a sound or packaging is also protected by the trademark law.
Have you been to a Burger King restaurant in Mattoon, Illinois? I mean the other Burger King restaurant. There is a restaurant called Burger King, which has nothing to do with Burger King franchise.
Most clients come to me after their products reached the market. In fact, that’s when you know for sure that your product has the potential to be something. If not, why invest in registering trademark?
How do you react to a sight of a retail store that just launched? Early adopters enjoy using a product or service before other people do, but most of the consumers tend to be a lot less passionate about embracing a new store although its sight might pop among aging stores.
That is why many businesses spend fortune to run commercials on TV and place advertisements on publications to familiarize their trademarks to customers. Since an excessive amount of advertisements is pouring in through various media, most modern consumers consider the ads as something they want to avoid as much as possible.
Approaching the 2017 holiday shopping season, the e-commerce giant Amazon’s stock price is heading to $1,200. Amazon.com, often quoted as “The Everything Store”, reportedly accounts for 46% of the entire online retail sales.
An interesting thing about shopping at Amazon.com is that you do not particularly notice the items sold directly by Amazon. All items sold at Amazon receive the same treatment, and the same format applies to all product pages. The product order is determined by objective statistics like sales, rating, and price. Quite often, items sold by third-party sellers are bestsellers or Amazon’s Choice.
A trademark is a mark you use in order to identify your good or service.
For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.
But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.
So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.
That’s a brief overview of what trademark does and doesn’t. Let’s find out more.
There’s been reports about a huge number of applications, originating from China. See e.g. this WJ article at https://www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-s-officials-1525521600.
Then, is there a backlog created by the increase of Chinese trademarks?
I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.
Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.
When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.
After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.
So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.
Above is a cumulative showing of trademark fees (government fees only).
Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?
This calculation doesn’t include a one-time filing for incontestability in the 5th year for $200, which is technically optional.
However, if you don’t do it correctly, there are penalties.
When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.
Aside from that, there are legal fees.
Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.
As a result, your cost can vary widely depending on your trademark and how you proceed with it.
[updated to reflect increase in fees in 2017]
Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.
The easiness comes with a risk.
For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.
So there’s $99 (plus application fees) trademark registration services online.
Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.
There is a reason for such a low price.
Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).
See other topics in the Basics in 10 min.