How Your Trademark Application Is Processed

If you’re considering registering your trademark, this review of the USPTO trademark application process will show you that it’s not quite as difficult as patenting. A trademark application can evolve into registration in as little as 7 to 12 months if certain stages are followed correctly and swiftly. Let’s take a look at the numerous stages and prices involved with trademark registration. It may be helpful to consider the trademark application in stages:

  1. Pre-filing: What steps should you take before filing a trademark application?
  2. Filing and prosecuting a trademark application
  3. Registration and renewals (post-registration maintenance)

Trademark application cost

Our initial filing charge for a federal trademark application is $950 per class, which includes our $600 flat rate and the $350 USPTO filing fee. Our first filing fee does not include a knockout search, which is available for an extra $500 per class.

Several other trademark services and events could result in further legal fees. Focus on the following factors to keep trademark application fees under control:

  1. the number of classes of goods and services;
  2. the filing basis (whether the actual use of the trademark or an Intent-To-Use); and
  3. the number of USPTO Office Actions if any, and the types of rejections or requests contained therein.

The number of classes of goods and services

The number of classes and the grounds for filing can be specified ahead of time. If the things fall into the same class, it is possible to file for many products while keeping expenses low. For trademark applications, our firm charges flat attorney’s fees.

Intent-To-Use (ITU) vs. use-based

There will be an additional cost of $600 per class to file the Statement of Use if the application is based on an Intent-To-Use (or Amendment to Allege Use as the case may be). You can also request a 6-month extension for a fee of $600 per request.

Rejections of trademarks: an unpredictably high and potentially costly expense

The prospect of a trademark rejection by a USPTO trademark examiner (“examining attorney”) can be unpredictable and costly. It would be fantastic to breeze through the trademark application procedure with no Office Actions. If no Office Action rejections are received, the total cost of a trademark application with a single class of goods/services from initial filing through registration for a use-based application would be $950 per class. If no extensions of time for filing use proof are requested, the total cost of an Intent-To-Use application would be $1,550 per class.

Responding to a Trademark Office Action can be expensive. Our firm now charges a flat amount of $295 for a simple non-substantive Office Action. Our price for dealing with refusals based on the possibility of confusion or basic descriptiveness would be around $2,800 for each type of refusal.

Pre-filing considerations: How to cut down on the costs and time it takes to file a trademark application

The most practical strategy to save money on trademark registration is to lower the likelihood of rejections. The possibility of confusion rejection (your mark is too similar to another trademark filing) and the purely descriptive refusal (your mark describes a quality, characteristic, or feature of your recognized goods/services) are two of the most typical rejections.

Consider conducting a knockout trademark search before filing your trademark application to lessen the chance of a likelihood of confusion refusal. Knowing whether or not other people have filed comparable marks will help you spot obvious hazards before you apply for the mark. Such searches frequently result in further ideation of new markings that are perhaps less dangerous than the initial mark. A knockout search is included in our trademark application package at no extra charge.

In addition, experienced trademark attorneys can advise you on the possibility of a purely descriptive denial. The issue is the meaning of the words in your mark about your goods or services, not how prevalent they are.

From Beginning To End, The Trademark Application Procedure

  1. Initial filing of trademark application

Before filing a trademark application, you must make several critical judgments. Will you apply a wordmark or a design mark? Should you submit a design mark, such as a stylized logo, in black-and-white or in color? Will there be an intent-to-use, actual-use, or foreign registration filing basis? What exactly are the products or services? Is it necessary to avoid using generic terms? Do you own any trademark registrations that are identical to mine? Will a US application for the same mark claim priority over a foreign application?

  1. Trademark Office Actions

It takes around 3-6 months for a USPTO examining attorney to review the application after the original filing. An Office Action will be given if the examining attorney rejects the application or has any questions or requests, giving the applicant a non-extendable 6-month period to answer.

  1. Mark Published for Opposition

The mark will be published for the opposition if there are no rejections or any past objections have been entirely handled. The applicant will get a Notice of Publication that specifies the commencement date for the 30-day period during which any member of the public may object to the mark’s registration. If no oppositions are filed, the USPTO will issue either a certificate of registration (for marks for which evidence of use has previously been submitted) or a Notice of Allowance (for ITU applications).

  1. Notice of Allowance (ITU only)

The applicant has six months from the date of the Notice of Allowance to submit the Statement of Use. If more time is needed, the applicant may request additional extensions in 6-month increments for a total of three years from the date of the Notice of Allowance.

  1. Certificate of Registration

Only after the certificate of registration has been issued may you use the circle R symbol. Renewal deadlines are usually six years after the registration date, ten years after that, and every ten years after that. Unlike patents, trademark registrations are perpetual as long as the owner continues to use the mark on the products or services listed in the registration.

How long does it take to register a trademark?

If you submit a use-based application, the quickest time to get registration is around 7-12 months, assuming no Office Actions or oppositions. Add the time it will take to use the mark on the goods/services and submit a suitable Statement of Use with appropriate specimens to an Intent-To-Use application.

What should you do after you’ve registered your trademark?

You can only use the circle R symbol now. Make a note of the deadlines for renewing your trademark registration, or have your IP attorney remind you.