Trademarks

You should consult with your favorite trademark attorney. To start the process, you can schedule a consultation with my Online Calendar 

During the consultation, we will review your trademark and spot-check for common problems. For example, does it have a stylistic element?  If so, we will cover whether the trademark should be directed to the standard character mark or the design elements. Do you have a logo associated with the mark?  If so, we will cover the pros and cons of seeking trademark protection for the logo.

During the consultation, a knockout search is conducted.  A knockout search is a search of the federal trademark database for similar marks.  It determines the likelihood of your registering your trademark and of the risk of infringing on someone else’s trademark.

We will craft a goods-and-services description for you during the consultation.  The goods and services should describe your product or service but should also be developed so that an examiner can find it.  In this way, when others search for or file a similar trademark, your trademark can be found and used to reject their trademark application.

During the consultation, ownership issues are discussed and resolved.

Ownership issues arise when there are two or more entities that want to register a mark jointly.  We cover the different ways to file the trademark application and the simplest way to avoid issues in the future.

During the consultation, we will review how the mark will be used in your business.  The main purpose is to determine whether a trademark registration will give you what you want.

Your trademark application needs to list all of the goods and/or services you want to associate with your trademark. Learn more about how to craft a goods and services description?

For example, if you are a hair salon, then your trademark application will be filed in one class 44 for hair salon services.  In this case, the trademark application will cost $1,250 ($900 plus $350). 

If your hair salon sells its own private label shampoo, then your trademark application will be filed with 2 classes – “hair salon services” in Class 44 and “shampoos” in Class 3.  In this case, the trademark application will cost $1,600 ($900 plus $700).

A trademark class is a taxonomy system adopted by the Trademark Office to categorize all goods and services into 45 different classes.  During the consultation, we discuss your business and the types of goods and services you are offering.  Based on our discussion, you can specify the number of goods/services and the classes in which you want a trademark

The USPTO uses these classes or categories as a way to manage the fees that the trademark office charges to examine trademark applications. 

In particular, the USPTO charges more for a trademark application with more goods and services compared to one with fewer goods and services.  The USPTO charges $275 to $350 per class.

An office action is a document from the trademark office.  A trademark examiner reviews your trademark application and provides a list of issues that need to be fixed before the Trademark Office will allow it to be registered.  

A statement of use is a document submitted to the trademark office to show how you are using the mark in commerce.

A knockout search is a search of the federal trademark database for similar marks.  It determines the likelihood of registering your trademark and also the risk of infringing on someone else’s trademark. It’s called a “knockout” search because if you encounter any existing trademarks held by another person or company, and those marks are very similar to what you are trying to trademark, then you are knocked out of consideration and will not be able to get that trademark.

Learn more about conducting a trademark search.

You do not need a trademark registration to use the mark.  

However, it is beneficial to protect your brand since you will be spending significant amounts of money to build a business around your brand.

You can stop others from using your mark in the future.  

When you sell your company, your brand is an asset that can increase the value of your company.

For example, you may think that most small mom-and-pop shops at a strip mall did not register their trademark or store name.  Why should you? 

If your goal is to have a small business at a strip mall and that’s it, then a registered trademark is less valuable to you.  However, if your goal is to expand to other locations, then the investment you put into your brand ought to be protected.  You do that by registering your brand or trademark.  

A trademark registration can be for a product that you sell or for a service that you offer.  Marks associated with your service are referred to as service marks.

Registration of a trademark or service mark is valuable if the mark is valuable to you and you’re investing substantial financial resources in building up your brand.

No: The trademark can be owned by you personally or by a corporation.  There are pros and cons of owning the registration personally and by the corporation.  

We cover that issue during the consultation.  If you decide to hold the registration personally, then we can file the trademark application immediately.  If you decide that the corporation ought to own the trademark, then we would decide on the particulars of the trademark application then wait to file the trademark application until after you have filed to create the corporation.  

A product does not need to be built before filing a trademark application.  A trademark application can be filed as an “intent-to-use” (ITU) application.   

To protect your brand, a separate trademark application has to be filed for different aspects of your brand such as the style, logo, and words used in your brand.    

During the consultation, we will cover the pros and cons of protecting each aspect including your logo, trademark, and any graphics associated with your brand.  

Based on our discussion, we will prioritize the different aspects so that you can pick and choose how to protect your brand. 

The cost of a trademark registration is $2,500-3,000 if everything goes smoothly.  If issues arise, then the trademark registration process could cost thousands, more depending on the issue that needs to be resolved.  For example, the examiner may reject the description of goods and services.  A response will have to be filed to address the issues.

Additionally, clients typically have questions throughout the process, which will be billed at my standard hourly rate.

Payment is made at the time of the consultation.  Additional payments are made during the trademark process as work is being performed.  Your credit card will be placed on file and charged only upon your approval.   

My hourly billing rate is between $395 to $600 depending on the type of matter being resolved.  Some matters are quoted as a flat fee.  If you have further questions, please do not hesitate to ask.

A trademark may consist of letters and a design element.  When you are starting out, the primary mark that you want to protect consists of the letters and words of the mark, not necessarily the design elements.  

In this regard, when you have a trademark that has words and a design element, you will generally file only one trademark application for the standard character mark.

To learn more, read “Trademarks: Standard Character Mark versus Design Mark.”

If you have any other questions about the trademark process, you can schedule a consultation or text me at (949) 433-0900.