FAQs: Our Trademark Process

Our Fees for Virtual Counsel Members

  • Filing a US trademark application for a name or slogan is a $900 fixed fee broken down as follows:
  • $275 for 1 class of goods/services (included for Virtual Counsel members)
  • $400 for the clearance search/conflicts search
  • $500 for the application.
  • Additional classes (e.g. food in addition to clothing) are $225 each to the USPTO, no increase in legal fees.  
  • If a “Statement of Use” is filed separate from initial application: add $200

Prosecution and TTAB Fees

  • Prosecution is the period of back and forth with the USPTO of fighting to get the application approved; and includes fees for docketing, responding to office actions, appeals (if necessary), & etc. It is generally charged by the hour.
  • For applications without serious objection, the only charges will be a hundred bucks or so for docketing the receipt of letters from USPTO of acceptance.  This is the outcome in most applications that use unique, non-descriptive names (e.g. KODAK)
  • For applications with minor objections from the USPTO, we’ll have to respond to office actions. This is the other most common outcome in applications that have unique, non-descriptive names.
  • If the examiner digs in on a rejection, and we want to fight for it, we may have to appeal to the TTAB.  This is rare.
  • Other parties can oppose our mark, this starts a mini-litigation before the USPTO Trademark Trials and Appeals Board over whether we should get a registration.  This is rare.

It is important for clients to know that, at the end of the day, while preparing and filing the trademark application is a predictable task that we can do a fixed fee on, the later prosecution of that application is more like litigation – its an adversarial process between us and the USPTO.  We can be pretty confident which ones will be objected to, but it is really hard to predict with any accuracy more than that.  

The best way for the client to avoid fees for prosecution is to pick names that are unique and non-descriptive.  E.g. consider “KODAK” for cameras.  KODAK is a made up word that has no meaning in any language, it is unique and non-descriptive, you could use it as a trademark on anything.  Chance of significant fees for prosecution is almost 0%.  

USPTO Process:

After the application is submitted, within 3-6 months the USPTO will issue a response. Commonly, the USPTO will issue an Office Action to discuss any substantive or procedural issues with the application/mark. A response is due within 6 months. The USPTO will then approve/deny the registration. If approved, the registration will be published for public opposition. Once the opposition period ends, a registration certificate will be issued based on use. 

If application was filed with a statement of use, the mark will receive registration status.  If the application was filed based on the intention of use, a statement of use need to be filed within 6 months. 

Registration updates are required between the 5th and 6th year (§8 or §8 & §15) and again between the 9th and 10th years (§8 & §9) to remain active.

You should allow for 12-18 months for the full registration process. Occasionally, a quicker turnaround can be warranted.

USPTO Filing Fees:

$275 per class, per mark. However, no additional fees are required during the normal processing, including Office Actions.

Statements of Use, if not filed with the application, are $100. Amendments and extensions range from $100-125.

USPTO Renewal Fees:

§8: $125 per class, per mark.

§9: $300 per class, per mark.

§15: $200 per class, per mark.

USPTO accepts payment by Credit Card, USPTO Deposit Account, Electronic Funds Transfer.  Fees are paid independently. USPTO fees listed for electronic filing and are subject to change.

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