A few years ago, we wrote an article summarizing the timing and costs associated with the clearance and application to register a trademark in the United States. Fee increases and delays at the Trademark Office (caused in part by Covid and in part by a rise in the number of new trademark applications – largely from China) made the old article obsolete. So here’s an updated version. Know that the time and cost estimates are general guidelines – various issues might arise that add time and/or costs to the trademark application and registration process.
Clearance
The time it takes for us to clear a mark for use and registration depends on what kind of search you request.
For in-house searches:
Time: Results usually delivered within 1 week from the date of request
Cost: $100-200 vendor fee for design searches only
For full searches:
Time: Results usually delivered 1-2 weeks from the date of request
Cost: $670 vendor fee
Preparation of Application
Time: 1-2 days from the date of request
Cost: $350 USPTO filing fee per mark, per class of goods/services
Prosecution of Application
Time: It is now taking about 7-8 months for a newly filed application to be reviewed by an Examining Attorney at the Trademark Office, and in the best-case scenario, it takes at least 11-12 months from the date of filing until the date of receipt of either a registration certificate or notice of allowance. However, issues can arise that cause further delays. For example, the Trademark Office might issue an “office action” raising a concern about the application. There is currently a 6-month deadline to respond to an office action, however, starting December 1, 2022, there will be a 3-month deadline to respond, with the option to extend for an additional three months for a $125 fee. The Trademark Office might suspend an application if there is an earlier filed third party application that needs to be examined. Also, it is possible for a third party to oppose an application when it is published for opposition, which can cause significant delays.
Cost: Prosecution costs depend on whether or not there are any issues that arise during examination; the cost to monitor and report to your during this process if there is no office action and/or no third party issue is minimal.
Additional Time and Costs for Applications Based on Intent to Use
Time: There are additional costs for applications filed based on intent to use (as opposed to actual use). Once a notice of allowance is received, an applicant has three years to file a statement showing use of the mark in commerce. If there is no use at the end of the three year period, then the application will be abandoned. From the date of the notice of allowance, at every six month interval, the applicant must either file a request for an extension of time to file a statement of use, or file the statement of use itself.
Cost: $125 USPTO fee per mark, per class, for each extension of time; $100 USPTO fee per mark, per class for the statement of use.
Maintenance of Registrations
Time: A trademark registration must be renewed between the 5th and 6th anniversary or registration, and then between every 9th and 10th year anniversary thereafter.
Cost: The USPTO filing fee for the 5th year renewal is $425 per mark, per class. The USPTO filing fee for the 10 year renewal is $525 per mark, per class.
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In addition to the USPTO and vendor fees discussed above, there are charges for attorney time, charged either as a flat fee or on an hourly basis. Once we understand your needs, we can provide you with a complete estimate of your costs and fees.
