The process of preparing and filing your trademark application includes researching the proposed trademark, preparing the application, filing the application, and responding to “office actions” from the United States Patent and Trademark Office (USPTO).
- $350 per class of goods/services (click here for a list of classes)
- $300 – $400 for the clearance search/conflicts search
- If a “Statement of Use” is filed separate from initial application: add $200
Trademark Prosecution and TTAB
- Prosecution is the period of back and forth with the USPTO, fighting to get the application approved, and docketing and responding to office actions.
- For applications without serious objection, the back and forth is minimal. This is the outcome in most applications that use unique, non-descriptive names (e.g. KODAK)
- 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 your mark, this starts a mini-litigation before the USPTO Trademark Trials and Appeals Board (TTAB) over whether you 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.
This is why it is best for clients 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.
USPTO Trademark 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:
$350 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.