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TRADEMARK REGISTRATION

Every state issues their own trademarks, but getting a state trademark is normally an investment not worth making. Federal registration will, for all intents and purposes, trump any state registration. For example, if you get a trademark in Florida and use the mark in commerce only in Orlando, Florida, and subsequently another party files for a federal registration on the same mark, you are estopped from using your mark outside of Orlando. Moreover, a state registration does not even entitle you to rights throughout the entire state. Notice, in the previous example, that if someone were to obtain a federal registration on the same mark for which you had a Florida state registration, you would only be able to use the mark in the limited geographic area of actual use, not throughout the state. So, if a trademark is used in commerce in Orlando, Florida, and another party acquires a federal registration, this second party can use the mark in Miami, Tampa, Jacksonville, etc. The important concept here is that while a state registration is usually much cheaper than a federal registration, state registration provides little or no significant rights.

The first step to acquiring federal trademark rights requires that you either (1) start using the slogan, name, or logo in commerce (i.e., some kind of commercial use) and then subsequently file a trademark application; or (2) file an intent-to-use application, which will lock in your filing date but which does not require immediate use. The intent-to-use application is essentially a reservation of the mark for a limited period of time. You will eventually have to start using the mark, but if you are not yet using the mark in commerce, this is the way to go. You can reserve the mark for an initial period of 6 months, which can be renewed with additional payment of fees for successive 6-month periods but cannot be extended beyond 24 months. The filing fee for an intent-to-use was formerly only $100, but this has been changed. An intent-to-use application now costs the same as a regular trademark application.

The next thing to be aware of is that a single trademark application for a single class of goods or services requires a filing fee of either $325 or $375, depending upon whether you file electronically or in paper form. If you file electronically, the filing fee is only $325, but if you choose to file a paper application, it is $375. {USPTO fee schedule}

In order to obtain the broadest protection, it is frequently necessary to obtain a trademark in more than one class. Additionally, if you want to protect the name and the logo, that would require two separate applications, which means two separate fees. Getting the broadest possible trademark protection can get expensive, particularly if you have a logo, slogan, and name that needs to or should be protected in three or four classifications. Although broad trademark protection can get expensive initially, however, the investment is well worth the return. A trademark is a significant asset and can lead to the development of familiarity and increased good will. If the initial expense seems large, consider filing for at least one trademark application as soon as possible, and then file for additional marks as funds become available.

Trademark applications can be completed online through forms available from the U.S. Patent and Trademark Office. Commercial vendors have also created their own automated processes that gather the information from users and then enter the appropriate information in the appropriate places in the application. For those who do not want to go it alone, which is common, an attorney can be hired to prepare and prosecute the application. If an attorney were to be hired to prepare a single trademark application, the following charges could be expected, which are probably rather uniform in most parts of the United States:
  • Filing fee (for one mark in one class) = $325 or $375
  • Trademark Search = $400 to $600
  • Attorneys Fees Relative to Trademark Opinion = $500 to $1,000
  • Attorneys Fees Relative to Trademark Application = $1,000 to $1,500
Again, it is important to remember that anyone can initiate the trademark application process on their own; hiring an attorney is not necessary. It is equally important to realize that a trademark application can be filed without first obtaining a trademark search and/or a trademark opinion. A search and trademark opinion is preferable, however, because it will let the applicant know if anyone else is using a similar mark. This provides the ability to make changes to the mark before filing, which can and should help ensure easier passage through the Trademark Office. A search and trademark opinion is preferable, however, because it will let the applicant know if anyone else is using a similar mark.

In the event that there are one or more related applications, the trademark filing fees would increase by the number of applications, but there may be economies of scale with respect to the trademark searches. Additionally, if the applications are truly related, there should also be an economy of scale with respect to the anticipated attorneys fees, provided that there are no unforeseen complications with a particular class or mark.

USPTO Trademark Examining Procedure