Effective November 1, 2023

TRADEMARK

Full-Service Trademark  

Clearance Searches

If after your trademark consultation, you would like our team to perform additional Clearance Searches on potential marks, our team can do so upon request for $125 per mark before invoicing your Flat Fee (described below). Clearance Searches are a review of only the current USPTO database delivered via email as a more affordable alternative to an additional Comprehensive Trademark Search.

Flat Fee

You have the option of either one upfront payment of $2,250 per mark or 5 monthly payments of $500 per mark, plus USPTO fees (on a per-application basis), which includes our services to file one USPTO Class (USPTO fees discussed below) per application. Our service fee for each additional USPTO Class listed on an application is $75, with your prior approval. 

USPTO Fees

The U.S. Patent and Trademark Office (“USPTO”) fees are $250-$350 per class of goods or services (TEAS Plus or TEAS Standard respectively). As part of your Comprehensive Trademark Search detailed report, you will receive our recommendations on class(es) of goods or services to include in your application to ensure you have the most comprehensive protection based on your intended use of the mark. Once you have confirmed your class(es), our team will process payment of the USPTO fees. Once the trademark application is filed the USPTO fees are non-refundable.

Trademark Services Scope

Full-Service Trademark Services include the following legal services:

• Perform Comprehensive Trademark Search, including:
  • Search for similar marks in the current USPTO database, Common Law, Domain Names, and Business Listings
  • Recommendation of classes for goods or services to include in your application
  • Advise on specimens to be collected
• Deliver a Comprehensive Trademark Search Report for your review and answer any questions as necessary
• Once you have confirmed your class(es), our team will process payment of the USPTO fees
• Collect specimens (samples of your trademark as used in commerce) required for the application, including connecting with you on any updates that are needed to support the application, and follow up with you as necessary.
• Preparing and filing the trademark application with the USPTO.
• Responding to any procedural office actions from the USPTO.
• Monitoring the progress of the application, providing updates as needed to keep you informed throughout the entire trademark process, and answering your questions along the way.
• Active trademark watch is a proactive measure to alert you of infringement or misuse of your mark during the application process and ongoing after registration.

Comprehensive Trademark Search Report

After you receive your Comprehensive Trademark Search Report, our team recommends filing your trademark application as soon as possible. Immediately after the comprehensive trademark search report is shared with you, you will have the best information to make an informed decision. Your filing date gives you priority after later created intellectual property, even if filed as “intent to use” rather than “in use”.

Since the USPTO is receiving new applications daily, our Comprehensive Trademark Search Report is a snapshot in time. For this reason, there is a risk with any amount of time that has passed since the Report was shared with you. While you may request that our team confirm the findings in your Comprehensive Trademark Search Report at any amount of time before we file your trademark application (to ensure you have the most current snapshot), we will require it after 90 days have passed since the date of your Report for $550 per mark before filing your trademark application.

If your mark was not cleared based on your Comprehensive Trademark Search Report, or if you elect to change your mark, you can either elect to perform an additional Clearance Search at $125 per mark or perform an additional Comprehensive Trademark Search for $550 per mark. Clearance Searches are a review of only the current USPTO database delivered via email based on our team’s professional judgement. However a Comprehensive Trademark Search is a review of similar marks in current USPTO database, Common Law, Domain Names, and Business Listings delivered in a written report, with advice on classes and specimens.

Ad Hoc Trademark Services (not applicable to Full-Service Trademark clients)

If you, or someone on your behalf, has already filed a trademark application or have a trademark registered, but you are requesting that our team represent you moving forward, the legal services described in “Full-Service Trademark” will not apply to you unless you opt to be a Full-Service Trademark client for a new trademark application.

In order for our team to represent you on an existing trademark application, we must complete a Change of Representation Form for a flat fee of $550 per application. This comes with the added benefit of our active trademark watch. Active trademark watch is a proactive measure to alert you of infringement or misuse of your mark during the application process and ongoing after registration.

What to Expect: Trademark Process Explained

USPTO Examiner

A Trademark Examiner at the USPTO will be assigned to your application within approximately ten months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes. If the examining attorney decides that there are either (i) any procedural deficiencies in the application, or (ii) any substantive reasons (including a likelihood of confusion), they will issue an Office Action. If the examining attorney sends an Office Action, we must respond to the Office Action before the deadline (currently 3 months) or your trademark application will be declared abandoned. In the event the USPTO issues a substantive Office Action, you will be notified by our team. 

Requesting an Extension for Responding to an Office Action

If you do not provide the information requested by our team in a timely manner, and we are unable to submit a response to the Office Action by the deadline, we will notify you by email of the option to request an extension for a flat fee of $250 per office action plus USPTO fees (currently $125). Subject to our Communication policy above, if you do not respond to our email before the deadline, we may, in our sole discretion and at your sole expense, file the extension on your behalf if we believe it is in your best interest, otherwise we will not be held at fault if your application becomes abandoned. 

Procedural Office Action

A procedural Office Action from the USPTO is included at no additional charge for Full-Service clients or $550 per refusal for Ad Hoc clients. If only minor corrections are required, the examining attorney may contact us as your counsel by telephone or e-mail, to which we will respond promptly on your behalf. 

Substantive Office Action

A substantive Office Action from the USPTO is not included in the above-stated flat fee for either Full-Service or Ad Hoc clients. First, our team will weigh the options for a response with you, then with your approval, we will respond on your behalf, for a flat fee of $750 per refusal that has received such a refusal.

Amendment to Supplemental Register

At times it may be advantageous to amend your trademark application from the Principal to the Supplemental Register if registration of your mark is not feasible without more distinctiveness. First, our team will weigh the options of this amendment with you, then with your approval, we will amend your application for a flat fee of $550 per mark.

The similarities to Principal Register are: registrant may use the registration symbol ®; registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d); the registrant may bring suit for infringement in federal court (however registrant will have a higher burden of proof than if the mark was registered on Principal Register – this is the primary disadvantage); and serves as the basis to obtain registration in foreign countries.

Publication

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections in the response to the Office Action, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. After the mark is published in the Official Gazette, any party who believes it may be damaged by the registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. 

Opposition from Third Parties

To respond to any opposition (submitted by a third party), with your approval, you will be billed at our hourly rate (the hourly rate for attorneys is currently $375). Legal assistants, who will be utilized where appropriate to avoid unnecessary attorney fees, are charged at $175 per hour. These rates are subject to change once a year with prior written notice). 

“Intent to Use”

Applicable only if you are not using your mark in commerce at the time the trademark application is submitted. If the Notice of Allowance (“NOA”) has not yet been issued and the application has not yet been approved for publication, and you have already begun to use the mark in interstate commerce, you may file an Amendment to Allege Use $250/per class plus USPTO fees (currently $125). If no opposition is filed or you successfully overcome opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a NOA about 8 weeks after publication. An NOA indicates that your mark has been allowed, but does not mean that it has registered. Within  six months from the date of the NOA you must either:

• Use the mark in commerce and submit a statement of use (“SOU”) $375 per class plus USPTO fees (currently $100);
• Request a six-month extension of time to file a statement of use (extension request) $250 per class plus USPTO fees (currently $125);
• Request to remove a class $175 per class; or 
• Request to divide an application to separate the classes you are currently using from those that remain intent to use, $550 per new application created plus USPTO fees (currently $100).

Registration

If the mark is based on use in commerce and no party files an opposition or requests to extend the time to oppose, the USPTO will register the mark and send a certificate of registration to our team which we will mail to you upon receipt.

Once your mark has been registered our team will notify you and celebrate that you own your brand.

Maintenance

After the mark registers, you will be responsible for maintenance to keep the registration alive, including filing renewals between the fifth and sixth year after the registration date and then again between the ninth and tenth year after the registration date and every ten years thereafter. Guide My Business will alert you as these milestones approach with information on current service and USPTO fees. 

Protection

You are responsible for enforcing your rights if you receive a registration because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.

USPTO Fees

Please note that USPTO Fees are subject to change from time to time. You understand you will be subject to the then-current fee, which we will inform you of prior to filing.

Assignment

Assign ownership of your existing trademarks to streamline your business for $550 per registration.

Website Trademark Notice

Provide your website users notice of your registered/pending trademarks, while educating license holders on proper usage of your trademarks to combat infringement for $425 per website.

Changes and Amendments

Our team will use the information that you provide on your intake forms and otherwise confirm prior to filing your applications. Should you need to change or amend your application or registration, the following fees may apply:

• Change of Address $175 per application; or 
• General Amendment $375 per application

COPYRIGHT

Registration

Register your original works of authorship with the United States Copyright Office for optimal protection from infringement, including removal of infringing content by Internet Service Providers if the owner will not comply as well as the right to statutory damages and attorneys’ fees for $750 per published design. However, there may be a discount if your designs are unpublished. Please request more information from our team.

DMCA Designated Agent

Safeguard your business from claims of copyright infringement for $550, plus $6 US Copyright Office fee. The safe harbor created by the Digital Millennium Copyright Act (DCMA) provides safe harbor for online service providers from monetary liability for copyright infringement based on the actions of their users, in exchange for cooperating with copyright owners to expeditiously remove infringing content and meeting certain conditions. 

Claims of Infringement

Advocate for your rights. Our team will prepare Cease and Desist Letters and/or DMCA Notices for third parties who are infringing on your intellectual property rights on your behalf. We can also access the validity and respond accordingly to any claims of infringement you have received from third parties for $375 per hour. 

LICENSING

Grant permission to a third party to use your registered intellectual property in exchange for compensation, with intentionally crafted terms of use to protect the reputation and quality of your brand for $375 per hour. Licensing is an often overlooked monetization strategy that we urge our clients to consider after they have secured registered copyrights and/or trademarks. With that said, even unregistered intellectual property has licensing opportunities.