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J. Bennett White, P.C.

 

Intellectual Property Law Questions

Trademarks

How much will it cost?

Short Answer: It depends.

Long Answer: In the past, we have had some trademark registrations approved for fees as little as $1,000 to $1,100, exclusive of costs. In those cases, the applications got virtually no pushback from the trademark office and were not opposed by anyone else. In the more common situation, the application is eventually approved, but only after a lot of legwork and negotiation with the trademark office. When that happens, the fee reflected the amount of obstacles raised by the trademark office, which there is really no way to anticipate. Other times, an application will be approved for publication without any real resistance from the examiner, but is then met with an objection by someone claiming that the registration sought would interfere with their mark. Typically, this leads to negotiations for consent from the prior registrant. Effective solutions can be quite varied and may involve particular creativity. In a complicated scenario, fees could easily be $10,000, or more.

Why can’t you tell me how much it will cost?

Short Answer: Because there’s no way to estimate how much work will be involved.

Long Answer: The reason we have to charge on an hourly basis is because we have no way to anticipate what kind of obstacles, if any, will be presented, what will be required to overcome them, whether they can be overcome, or whether the client will have any desire to continue pursuing registration once obstacles are raised.

How long will it take?

Short Answer: It depends.

Long Answer: There’s no way to estimate how long it will take for the necessary work to be performed as there is no way to anticipate what kind of obstacles, if any, will be presented and what will be required to overcome any encountered obstacles.

It is not unusual for people to think that registering a trademark is simply a matter of filing an application. In the best of situations, it does work that way. However, a federal trademark registration does provide for a limited form of a government-endorsed monopoly, which is not granted without some amount of scrutiny.

What kinds of obstacles are likely to arise?

The following is not an exhaustive list, and is meant only to give a general idea of what might arise.

  1. The trademark office may raise objections that can be overcome, but the client simply might not want to incur the cost of pursuing that option, in which case, the application will be withdrawn.
  2. The trademark office could deny the application and we could file an action to challenge that denial.
  3. The trademark office could claim that some other mark presents a barrier to our registration where we think the other mark is invalid, in which event we could file a lawsuit or a cancellation proceeding to cancel that mark.
  4. Another registrant could file an opposition to registration once the mark has been published.

What common misunderstandings are there about trademarks?

All trademark rights are derived from "use" of a trademark. Until a trademark is actually used in conjunction with goods or services, there can be no registration. A few years ago, the trademark statute was amended so that it now provides for what is called an "intent-to-use" application. An intent-to-use application can be filed in order to the equivalent of "reserving" a mark (like while a product is developed for launch or a marketing campaign is being designed). The trademark office will review the application and approve it for publication the same as a regular application; however, if everything passes, a registration will still not be issued until the mark is actually used in commerce and a specimen demonstrating such use is submitted to the trademark office. An "intent-to-use" application will always involve extra steps over a traditional application and will always be more expensive (although the difference may be fairly minimal).

Registration is not required in order to use a mark and registration is not required to have a mark. Rights are vested in a mark by the use of the mark. Registration establishes certain things about the mark, but rights in the mark come from use, not registration.

Does my business need a trademark?

A good trademark represents the goodwill of the business. It is also like any other form of valuable property. The more valuable it is, the more likely that it will be targeted by unscrupulous predators who will attempt to "trade" on the value of the mark. Just like other types of property have to be protected by keeping it locked or insured, a valuable trademark must be protected, as well. A trademark holder will need to do things like "policing the mark" and fighting off wrongdoers who might attempt to benefit from another company’s goodwill. Each business has its own perception of how valuable its "brand" is. For many businesses, a registration is okay if it can be done inexpensively, but is not considered to be valuable enough to warrant a significant investment. For other businesses, "brand" is everything.

Bennett White

Bennett White

Attorney - (Administrative Law, Banking Law, Bankruptcy, Business & Corporate Law, Collections, Construction Law, Employment Law, Intellectual Property Litigation, Litigation Management, Mediation & Arbitrtation, Outside General Counsel, Trial & Appellate Law)

 

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