Trademark searching, filing of domestic, state, or international applications, and preparing responses to Office actions or appeals from refusals of registration can all be provided for a fixed price and under a limited-type of representation agreement.
Assistance with additional tasks applicable to the management of registrations, such as submitting declarations, recording registrations with U.S. Customs and Border Protection, or executing various trademark transactions is also offered as a one-time service option.
Legal work for representation during opposition, cancellation, or civil litigation proceedings is more complicated and time-consuming, but it may sometimes also be handled for a flat fee – the amount of which will be determined based on the nature of the case. Consider this further Information for Litigants if your trademark rights have been disputed by a third-party.
Searching for conflicting marks before filing a trademark application is essential to preventing future disputes and avoiding unnecessary expenses. Conducting a trademark search involves uncovering all registered and earlier-filed pending marks at the USPTO that might provoke a likelihood of confusion refusal, opposition or cancellation. It is also necessary to look for confusingly similar unregistered common law marks used on related goods or in connection with comparable services because the rights vested in those marks may be superior to those based on registration. Trademark searching is complex and requires examining multiple databases and Internet records to determine potential difficulties to registration and enforcement of legal rights.
Trademark applications are submitted electronically through the USPTO website. Only one mark per application is allowed so that registration of different versions of the same mark may necessitate filing of additional applications. Government filing fees are calculated per class and vary based on the type of application used. Each application is assigned a filing date, which determines priority among applications. Priority created by a filing date is not absolute and may be challenged later. Applications may be filed based on either “use in commerce” or “intent to use” a mark in commerce. For a timeline of the application process and for some extra filing guidance, view Application Resources.
Response to Office Action
Refusals under sections 1, 2(a), 2(b), 2(c), 2(d), 2(e)(1)-(5), 3, 6, 23(c) and 45 of the Lanham Act, issued by an examining attorney during the prosecution of an application require a substantive response from the applicant. Not all such refusals can be overcome and some of the challenges presented in an Office action may prevent an application from maturing into a registration.
Companies conducting business internationally or simply having their products manufactured abroad may benefit from registering their marks in foreign jurisdictions, especially because outside of the common law system, registration is the only means to protect trademark rights. Even firms that are still in the planning stage of expanding beyond U.S. markets should consider filing an international application, particularly when claiming priority rights under the Paris Convention would be relevant. See additional information about filing an International Application.
A Section 8 declaration must be filed on a date that falls on or between the 5th and 6th anniversaries of the registration. A combined §§8 and 15 declaration may instead be filed on such a date if a mark registered on the Principal Register has been continuously used in commerce for 5 consecutive years after the date of registration. A Section 8 declaration must subsequently be filed on a date that falls on or between the 9th and 10th anniversaries of the registration, and each successive ten-year period thereafter. A ten-year Section 8 declaration may be combined with a Section 9 renewal application as the time for filing both forms coincides.
Recording with CBP
Recording a trademark registration with U.S. Customs and Border Protection (CBP) can provide advantages to manufacturers of goods concerned about counterfeiting, gray market or stolen goods problems, or supply chain leaks.
Get the benefit of a professional review of your mark before it gets filed. Utilize legal counsel to devise the best strategy to prevent or overcome hurdles to registration in your case.
$350 / per mark
*Additional Federal Filing Fees Apply
$750 / per filing
Response to Office Action
Substantive Grounds for Refusal
Frequently Asked Questions
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