Clients frequently want to know how much it will cost to register a trademark. The answer is always: “it depends.” Here are some of the factors that can affect the cost of trademark clearance and registration in the United States.
1. Clearance
We generally recommend that clients engage in clearance work before filing an application to register a trademark. This is to ensure that a mark is “clear” to use. If you choose a mark that is already in use by a third party, then there is a risk that you will get a cease and desist letter – or worse – be sued for infringement. Doing clearance work minimizes this risk. In addition, clearance allows us to determine whether or not there might be issues with successfully registering the mark with the United States Trademark Office.
There are two levels of clearance. A full search involves our ordering and analyzing a comprehensive search from a vendor that specializes in clearing trademarks. They use various search strings and multiple databases to identify third party registrations and uses of potential interest. An in-house search involves our own search of the United States Trademark Office’s on-line database, and some focused Internet and social media searching. The results of in-house searching are reliable, but less thorough. An in-house search can be difficult for design marks, or marks that are common that would yield an unwieldy number of results. In that case, a full search is often more efficient.
The cost of trademark work is therefore impacted by whether you choose a full search, an in-house search, or no search at all. The cost of a full search report from our vendor is about $600.
2. The Number of Goods and Services
The cost of trademark work is also impacted by the number of classes of goods and services you are using (or intent to use) in connection with your trademark. If you intend to use a mark in connection with an on-line website, that constitutes one class of goods. If you also intend to use the mark in connection with clothing and water bottles, then you’d have to clear and apply to register the mark in three classes of goods. This increases the attorney time for both clearance and the preparation of an application. In addition, in the United States, the filing fee to register a trademark is generally $275 per mark, per class. The filing fee for a mark in a single class is $275, whereas the filing fee for a mark in three classes is $825.
3. Filing Basis – Use versus Intent to Use
An intent to use application allows you to file an application and reserve a trademark if you have a bona fide intention to use the trademark in commerce. An application can also be filed based on actual use.
Filing an application based on intent to use has some additional costs. Once approved (or allowed), an application based on intent to use will not register until a statement proving use is filed. There is an additional fee (and attorney time) associated with filing a statement of use. And if the use is delayed, then it may be necessary to file periodic requests for extensions of time to file statements of use. The United States Trademark Office’s filing fees are $100 per mark per class for an extension of time to file a statement of use, and $125 per mark per class for the statement of use itself.
4. Office Actions
It is possible that when an attorney in the Trademark Office reviews an application, he/she will issue an office action. An office action can be small (e.g.: a request for a better specimen showing use in commerce), or it can be substantial (e.g.: a preliminary refusal to register the mark based on a prior pending application or registration by a third party). There are costs associated with responding to an office action. Doing clearance work discussed above allows us to predict the likelihood of receiving an office action, and might help us develop strategies to avoid getting an office action (e.g.: by carefully crafting the description of goods/services to avoid a conflict with a third party).
5. International Applications
Trademark rights are national. If you are adopting a brand in the United States, someone else might adopt the same brand in another country.
If you plan to do business in countries outside of the United States and if budget allows, it might be advisable to file one or more applications in foreign countries. International filings can be done by engaging local or, in some cases, by taking advantage of a process that allows a U.S. attorney to file an international application that covers many countries.
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It is possible for an individual to successfully apply for and register a trademark on his/her own, by following the instructions on the United States Trademark Office website. However, many individuals choose to engage an attorney to assist with a filing strategy, trademark clearance, trademark prosecution and trademark enforcement before committing to a name, and investing time and resources manufacturing products or offering services under a brand.
Once you’ve considered clearance level (full, in-house or none), the number of classes of goods and services you want to include in your trademark application, and whether your application will be filed based on use or intent to use, we can provide you with an accurate estimate of your costs and fees.
