Trademark users may build rights in their marks by using the trademarks in commerce. If trademark users decide to rely on common law rights, there are no costs for formalizing the mark rights. However, in many cases, the benefits of registration outweigh the costs. Further, if necessary, the expense and difficulty of enforcing a common law mark actually make the common law marks more expensive over time.
Trademark registrations have costs associated with: (1) the application/registration process; and (2) periodic maintenance payments due over the life of the registration. With respect to the application process, depending on how the applications is filed and what issues arise during the examination, there may be application fees, examination fees, allowance fee, and post-registration maintenance fees. In other cases, trademark registrations may be completed while incurring nothing more than the initial application fees.
As noted above, there are no direct costs to use a trademark and acquire common law rights in that trademark. However, by not registering a mark, trademark holders run certain risks, including that confusingly similar users will successfully register, that they infringe a registered mark without knowing it, and that their rights to use the mark in certain geographic areas may be lost due to other trademark users forming prior rights.
Because of these potential risks, the cost of enforcing a common law mark may be more expensive over the life of a trademark. Further, the trademark itself may end up being less valuable than it could have been as a registered mark.
As noted above, for marks that are valuable enough to register, the fees associated with registration may include: application fees; examination fees; allowance fees; and registration fees. Some of these fees can be determined with certainty at the outset of applying. For example, all applicants must pay a per-class filing fee, and intent-to-use applicants must pay a per-class Statement of Use fee if the application has been allowed.
However, other fees are unknown at the time of applying. For example, the trademark Examiner assigned to the application could refuse to register the mark due to a likelihood of confusion issue. If this were to happen, the applicant would have the option of responding to the refusal. This response would most likely involve lengthy legal arguments, and would incur additional legal fees.
Another potential issues arises when a mark faces opposition from third-party mark holders. In some cases, applicants must negotiate with third-party mark holders in order for their applications to proceed. This also incurs additional fees.
At RPL, we have handled hundreds of trademark applications, which has enabled us to make educated estimates about the costs our applicants face. When working with RPL from filing to registration, most applications for registration fall in the $1,500-2,000 range, including attorney fees and USPTO filing fees. The fees that make up this total are described below in more detail.
Trademark applications require that the applicant list the goods and services for which the trademark covers or will cover. Every possible good or service falls in to a pre-determined category, called an international filing class. The trademark application filing fee structure is based on the number of classes for which the applicant applies for registration.
The current basic per-class fee for an online trademark application is $275. If the applicant supplies their description of goods and services from a list of USPTO pre-approved descriptions, the applicant may apply using an online “TEAS Plus” form and pay a reduced fee of $225 per class. Applicants applying in paper must pay $325 per class. In addition to the USPTO application fees, the application fees include the attorneys fees for filing the application, typically bringing the total fees for the trademark application to $1,500 or less.
After the trademark application is submitted, it goes to a trademark Examiner for review and approval or denial. Examination fees most commonly arise if the Applicant (through an attorney) has to perform additional work to resolve issues with the application. Sometimes, however, an Examiner will give the applicant the option to add one or more classes to their application to more appropriately cover the subject matter described in the application. In those situations, additional filing fees would be due.
Most of the examination issues for trademarks are simple, non-substantive requirements. Because of this, the costs for responding are low—usually several hundred dollars or less.
Sometimes trademark applications encounter serious substantive issues that, if not addressed, can cause the application to fail. The most common issue of this nature is that the Examiner identified another registered mark that was so similar to the applied-for mark that it was confusingly similar, called a likelihood of confusion refusal.
Challenging a likelihood of confusion refusal takes thoughtful and persuasive legal arguments. In preparing these responses, we draw from several different theories that can help to differentiate the marks and advance our client’s application. The complexity of these responses therefore requires significantly higher legal fees than would be the case for a non-substantive requirement. Likelihood of confusion refusal responses typically cost between $1000-$2000.
Once an applicant resolves all the outstanding issues with the application and the trademark has made it through the opposition period with no additional challenges, marks that are “in-use” will register while marks that were filed on an “intent-to-use” basis will receive a Notice of Allowance.
The Notice of Allowance indicates that the trademark has been cleared for registration once it is being used in commerce. In order to show that a mark is being used in commerce, an applicant must submit an additional filing called a Statement of Use.
The Notice of Allowance puts the applicant on an extendable six-month deadline for submitting the Statement of Use and a three-year deadline for the final Statement of Use submission date.
Statement of Use filings include a per-class filing fee ($100 at the moment) and attorneys’ fees for preparing the evidence of the mark’s use in commerce and submitting the form.
If the applicant is not using the mark in commerce by the first Statement of Use deadline, the applicant may file an extension to file the Statement of Use. This extension will give the applicant another six months to file. Extensions have a $150 per-class filing fee and incur additional legal fees. An applicant may extend their deadline to file a Statement of Use in increments of six months until they reach the three-year anniversary of the Notice of Allowance date. Each extension requires USPTO filing fees and additional legal fees.
After a mark is registered, the registrant must make occasional submissions and pay required fees in order to keep the registration active. Like applications, these maintenance requirements typically incur both filing fees and legal fees for the preparation and filing of documents.
Between the fourth and fifth year after registration, the registrant must submit a Section 8 Declaration of Use ($100 per class USPTO fee) showing that the mark is still being used in commerce. The registrant may also submit a Section 15 Declaration of Incontestability ($200 per class USPTO fee) at this time.
Between the ninth and tenth year after registration the registrant must submit another Section 8 affidavit and a Section 9 Renewal ($300 per class USPTO fee for an electronic filing, $400 per class USPTO fee for a paper filing). The registrant must then submit these Section 8 and Section 9 documents every ten years after that.
In each example of maintenance requirements above, the attorney fees required in addition to the listed USPTO fees should be in the range of several hundreds of dollars.
Please contact us, if we can assist you in preparing and filing a trademark application.