Why Trademark Registration Costs

Why trademark registration costs so much

Trademark Clearance Searches, Registration Procedure and Costs

Here we will explore what trademark registration costs and why it costs what it does. Please see the Standard trademark fees page as well.

In most cases, companies are well-advised to have a trademark search conducted before adopting any new trademark. This is because a company establishes priority rights to a trademark in the United States based on its use of a trademark or the filing of an application to register the trademark in the Patent and Trademark Office (USPTO), and the USPTO will not register a trademark which it considers confusingly similar to another mark which has been registered or is in process of registration. Clearance searches help ensure that a new mark is not confusingly similar to a previously used or registered mark and enable us to determine whether an established mark would face problems due to existing registrations. Such searches are essential to avoid the cost of having to change marks, the loss of established goodwill, and the threat of possible litigation. Comprehensive searches may not be as necessary, however, where a trademark has already been used.

Trademark clearance searches can be limited to knockout searches using the USPTO database, more thorough as computer trademark searches and as comprehensive as possible through full searches from professional search companies. I generally use computer searches of the records of the USPTO and state trademark offices to determine whether a confusingly similar mark is pending or has been registered with the USPTO. There is a charge of $100 per search for the computer time and report, as well as $250 or $300 for conducting the search and reviewing and reporting the results.

Computer searches are limited, however, to finding identical or similar registered or applied for marks. Since trademark rights are established in the U.S. by use or application, however, we suggest that Full Searches be performed for new marks that have not been used in commerce, for major brand marks, and for company name marks. Such searches include broader searches of trademark applications and registrations, and in-depth searches of common law materials, publications, and filings to identify unregistered marks and references, Internet domain names, and company trade names. The cost for obtaining a Full Search is approximately $460 to $580 for 5-7 day turnaround, and we charge a $600-700 to provide an availability opinion based on the results of the search. The total amount billed for providing availability opinions is based on the amount of investigation and analysis required, and can be capped.

As soon as a trademark is selected, if it is to be used in interstate commerce, it should be registered with the USPTO based on either actual use or intent-to-use the mark in commerce. Registration does not in itself prevent other companies from using your trademark - that is the responsibility of its owner. However, registration provides some important benefits: it establishes federal jurisdiction over the trademark in case the mark is infringed, confers on the trademark a presumption of validity and ownership, establishes a priority date based on the date the application is filed, and provides for national constructive notice of your company's rights in its trademark. Once a mark has been registered for five years it also becomes eligible for incontestable status, which limits the grounds upon which the registration can be challenged and establishes the registration as conclusive evidence of validity.

The cost of preparing and filing a federal trademark application in a single class of goods or services is $725 (which includes a $325 filing fee charged by the USPTO per mark per class of goods, and $400 for preparing and filing the application, and overseeing the registration process). If the application includes goods or services in more than one class, there is an additional fee of $50 per class, in addition to the USPTO $325 per class charge. Experienced trademark counsel like Gnosis IP Law will help ensure that the application will be accurately and correctly prepared, obtain wide coverage, and raise a minimal number of issues in the process. Up to 80% of all new applications receive at least one official action requiring a response, argument or clarification, but a properly prepared application will minimize the risk of refusal and enable a successful response.

Applications based on a bona fide intent-to-use a mark in commerce entail additional charges of $400 for the filing of an Amendment to Allege Use or Statement of Use (which includes a $100 filing fee and $300 for our fees in preparing and overseeing the filing and prosecution of the Amendment or Statement), or $350 for requesting an extension of time to file a Statement of Use (which includes the $150 filing fee and our fee of $200). Upon registration of a trademark, there is also a registration issuance, review, and maintenance fee of $150 for which we include the registration in our docketing system and provide reminders of important prosecution and maintenance requirements.

The application process allows third parties to challenge applications through oppositions. In addition, registrations can be challenged on any grounds for five years after registration. Gnosis IP Law can assist in defending against such challenges - as well as asserting them. Work on such inter partes proceedings would be generally billed on an hourly basis.

Once granted, a trademark registration is valid for 10 years from the date of registration. However, the Registrant must, between the fifth and sixth years after registration, file a Declaration stating that the mark is still in use. If a Declaration is not filed, the registration will expire. The registration is also entitled to incontestable status after 5 years of continuous use of the registered mark for the identified goods or services. This status can be important since it limits the grounds on which third parties may seek to cancel or challenge a registration, as well as the defenses an infringer may raise against the assertion of the trademark in litigation or an inter parties proceeding, and provides enhanced evidentiary value for the registration. The registration can also be renewed for additional ten-year terms as long as it continues to be used for the goods or services.

The cost for preparing and filing a Combined Declaration of Use and Incontestability is $700 (which includes the $300 Patent and Trademark Office fee per class, and our fee of $400) between 5 and 6 years after registration. The cost for preparing and filing a Combined Declaration of Use and Application for Renewal of a trademark registration for another ten-year term is $900 (which includes a $500 Patent and Trademark Office fee and our fee of $400.

The costs of clearance and registration of a trademark are important business expenses that help ensure against the cost of litigation or change of a trademark, and enable the trademark owner to take advantage of the federal law's procedural and evidentiary advantages, and help prevent the adoption of confusingly similar marks by third parties. Registration of trademarks is even more important outside the United States since in most other countries trademark rights are established by registration rather than use of the trademark, and some countries prohibit the sale of goods if their trademarks are not registered. Gnosis IP Law uses international registration programs and works with a network of law firms around the world to clear, register and protect its client's trademarks. The standard fees page lists Gnosis IP Law's fees, but the costs for registration vary by country and application method and can be provided by request.

Other Registration and Clearance Services

Gnosis IP Law also provides copyright registration services using the Copyright Office's electronic filing system. The fee for registration is $245 per registration, and we can assist in determining when multiple works can be registered together. We also provide copyright clearance and licensing services based on hourly and negotiated fees, as well as assistance with any type of agreement that includes the right to use or reproduce artwork, photographs, or trademarks.

Finally, Internet issues and domain names are increasingly important for businesses, and their availability or registration can directly affect your ability to use a trademark. The more than 400 new generic top level domain names (the letters to the right of the dot) that are being rolled out also pose unique challenges for trademark owners. Gnosis IP Law has been in the forefront of providing domain name registration and acquisition services, and assists clients in recording trademarks in the newly-formed Trademark Clearinghouse. Our fee for registration of domain names is $200 in most cases, but domain registration fees vary widely and negotiating purchases are billed hourly. Recording trademarks with the Trademark Clearinghouse in order to participate in the Trademark Claims and Sunrise Registration programs costs $550 to $1050 for one or three years respectively for the first trademark (including the $250 per year TMCH (Trademark Clearinghouse) recordal fee and our preparation and tracking fee of $300). Our fee is reduced to $150 for each additional trademark recorded in addition to the TMCH recordal fee.

Online and Social Media Services

We have been active in providing clearance and protection services for online and website materials for more than 18 years, and can assist with clearing images and content for use; establishing terms of use, privacy, and DMCA and other notice and take down programs to avoid liability; initiating and responding to challenges to the use of materials; and drafting or reviewing software, image, and linking agreements.

Gnosis IP Law is also an active participant in domain name registration and internet governance organizations, and has worked closely with ICANN during the development and current roll-out of its New gTLD program. We understand the issues trademark and content owners will face as more than 400 new generic top level domains become available on the Internet, and can help clients record their trademarks with the Trademark Clearinghouse and other services, and advise clients and C-level executives on the cost, process, and potential for New gTLDs and challenges in the environment.

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Michael Graham
Sammamish, WA 98975
• gnosisiplaw(at)gmail.com
• (847) 431.1984

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