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Trademark Application

Our service includes:

  • Knock-out search;
  • Attorney Consultation Time;
  • Drafting and Filing of Trademark Application;
  • Responding to Minor Office Actions; and
  • Sending Registration Certificate, if one is issued.

Owning a federal registration is the only proper way to use the ® symbol. The ™ and ℠ symbols are appropriate for trademark and service mark applicants to use because they designate common law rights to the mark. TMEP 906.04 says “Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud.   See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assocs., 20 USPQ2d 1156 (TTAB 1991).”

How long will it take a trademark application to register?

We’ll promptly follow up with you to gather information and file the application. It takes the government 9 to 20 months to issue a registration from a use-based application. The USPTO currently is experiencing delays due to an uptick in applications. An Intent-To-Use application will not register until use in commerce has begun. The government may issue office actions that slow down the process, but Lehner Law will strive to work with you to respond to the office actions well before the 6-month deadline to respond to each office action so that your application registers quickly.  If a third party opposes the application, it will be longer.

How much are trademark filing fees?

A comprehensive search is recommended before filing an application or adopting a trademark. The U.S. is generally a first-to-use system, so sellers who have earlier uses of similar trademarks will have superior rights over people who enter the market later. While our knock-out search uncovers trademark registrations and applications, we would have to do a more extensive search to find common law uses.

The government filing fee is $275 per class of goods or services, but certain applications can use the discounted TEAS Plus filing option which is $225 per class. TEAS Plus applications must use pre-approved descriptions of goods or services, among other requirements.

A use-based application will have no extra costs for showing use. An Intent-To-Use application will need to pay for a Statement of Use and possible Extensions of Time to file the Statement of Use. There is a $100 government filing fee for a Statement of Use. The deadline to show use my be extended up to 3 years. The government filing fee for each 6-month extension of time is $125 per class.

Our application fees include responding to minor office actions at no extra attorney fee. We charge $400 to respond to a major rejection, which is that the mark is “merely descriptive,” “primarily a surname,” misleading, deceptive, or has a likelihood of confusion with a pre-existing mark. Major office actions can be predicted by a knock-out or comprehensive search.

Additional filings are required to maintain the registration of a trademark. If you do not make these filings your trademark will be considered abandoned by the US Government and all of your federal registration rights will be lost. Specifically, there are filings due between the fifth and sixth year of ownership, at the tenth year of ownership and every ten years thereafter. The government filing fee for the 5th year Section 8/15 Affidavit is $300 for each class. The government filing fee for Sections 8 and 9 Renewals every tenth year from the registration date is $400 for each class.

What benefits do Intent-To-Use applications have?

While more expensive, Intent-To-Use applications are a major loophole in America’s first-to-use system. You may file even before you use your mark, which means you can get an earlier application filing date than a possible competitor. This could mean your mark has priority over someone else’s if a legal conflict develops or could develop — at the USPTO or in the marketplace.

For more information about these advantages, see the Trademark Manual of Examining Procedure (TMEP) §§201.01201.02.

What is a knock-out search?

A knockout search is a pre-filing search of the USPTO Trademark Electronic Search System (TESS) which is designed to analyze identical and sufficiently similar marks which may trigger a Likelihood of Confusion rejection by a USPTO Trademark Examiner. Knock-out searches are provided by us when we file an application, but these don’t search common law sources or design elements (which are analyzed in our Comprehensive Clearance Search). When an experienced and knowledgeable trademark attorney performs a knockout search, they can anticipate certain obstacles during the trademark application process and will be able to analyze the legal issues involved in a Likelihood of Confusion analysis. For example, perhaps the prospective trademark is similar to an existing trademark but the goods/services are sufficiently different to obviate any consumer confusion problems. Conversely, an experienced attorney will be able to spot meaningful differences in the marks themselves that distinguish one from the other so that Likelihood of Confusion can be negated. In some cases, it makes sense to proceed with the trademark application, whereas in others, a potential finding should halt the application process and compel the applicant to select a more worthy mark.

The knockout searches carried out by Lehner Law are done with the intention of finding prior filings with similar or identical marks. An experienced attorney can further extrapolate potential ancillary issues that are not immediately obvious, such as the 2(e), “Descriptiveness” refusal. Remember, a trademark that merely describes the goods/services sold under the banner of the trademark is not eligible for trademark registration on the Principal Register. So, if a prospective trademark appears “Descriptive” but the trademark search reveals that the superficially “Descriptive” trademark has actually been approved in other trademark applications, the attorney can help guide the applicant how to best modify the mark to meet this Descriptiveness burden.

The trademark application process may involve its own minefield of risks, but these risks can be preemptively reduced when a thorough trademark search is done BEFORE deciding on a name. Remember, the trademark search will not only identify obviously preclusive trademarks but will also allow an experienced trademark attorney to identify a strategy of tailoring the new, prospective name in such a way as to avoid infringing on existing names. For example, analyzing an existing trademark’s goods/services can instruct the new applicant how to draft its own description of goods/services that does not tread on the existing mark. This method of more narrowly describing a company’s unique goods/services may minimize likely confusion and thus avoid a 2(d) rejection from the USPTO. If you build your brand around a trademark that is ultimately rejected by the USPTO, product development and marketing under the old name will have to be entirely recreated. To mitigate these risks and increase a company’s chances of branding success, it is best to first fully analyze the prospective trademark for potential barriers by conducting a thorough trademark search. Our Comprehensive Clearance Search is more thorough than a knock-out search and can be bundled with an application.

William Lehner, Trademark Lawyer
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