WHY REGISTER? To protect the right to commercial use of a name of a product or service.

Scope of Coverage

WHAT IS A TRADEMARK? A trademark registration is the ownership of a name. A federal trademark registration allows a person exclusive commercial usage of a product or service name. The trademark registration is usually applied for by a trademark attorney on behalf of an applicant. A trademark registration is the intellectual property of the owner so it can can be sold, licensed or given away. For example, the owner of the mark INDUSTRIAL TRADER MAGAZINES could prevent anyone in the United States from using the mark to distribute magazines. A California corporate registration or d.b.a. does not give anyone trademark rights.

Registration of a Trademark with the United States Patent and Trademark Office gives the owner of the mark certain rights in all states. Without registration, a user of the mark may not be able to prove first use and his rights will be geographically limited. The registration of a Trademark also gives the owner a presumption that he owns the mark.

Trademark Registration allows criminal prosecution in many states for counterfeit marks, even for 3D Trademarks. For more info on 3D marks and criminal penalties [Click Here].

The following examples represent common legal pitfalls due to a failure to timely register a mark.

Example #1: Xyvex Computer, Inc. opens up a store in Sunnyvale. They do not bother to conduct a trademark search. A few weeks later, they get a summons and complaint seeking an injunction and damages for infrigement of the registered mark held by Xyvex Integrated Peripherals Corp.

Example #2: Xyvex Computer, Inc. has been doing business in California for 2 years but has not registered their mark. They want to start a website so they visit Network solutions, but discover that a cyber squatter has already registered their domain name. The cyber squatter claims that the website was registered to sell computer parts on the Internet, the cyber squatter demands $100,000 for the domain name.

Example #3: Xyvex Computer, Inc. has been doing business in California for 2 years but has not yet registered their mark. They plan to expand retail sales into Arizona. After raising 5 million in a private placement, they open up 12 retail stores. Sales are great until a few weeks later they receive a cease and desist letter from Xyvex Integrated Peripherals Corp. (a Virginia Corporation) who holds a pending trademark application XYVEX and claims prior use of the mark Xyvex in computer catalogs circulated in Arizona.

Stages of Trademark Applications

INITIAL APPLICATION: The trademark application begins with the initial application. At this stage the filing fee as of January 2000 is $325/class. Attorneys fees are $265 per Trademark Application.

OFFICE ACTIONS: 4-8 months after filing, the Trademark office either allows the mark or issues an office action explaining defects and why the mark can not be issued. The applicant's attorney then replies to the office action arguing the client's case, curing defects and submitting exhibits. The office actions usually require between 1-3 hours of attorney time. If the mark has not been used in commerce then exhibits showing use must be filed before the mark can be registered.

FEES TIMELINE AND COSTS (Total Costs = Attorney Fees + PTO Fees)

ATTORNEYS FEES: Instead of the $265 rate for the initial application alone, one may chose to pay a flat rate for the entire trademark prosecution representation. We can offer one flat rate for attorney fees to cover representation for all stages of the Trademark application from: (1) initial application; to (2) Trademark office actions; to (3) issuance or rejection. Covers all different kinds of Trademarks: Service Marks, Association Marks, Word Marks, Logos/Picture Marks, Application Costs (does not include opposition proceedings) Depending upon your mark, we can offer you a quote usually in the range of $650-900 for the entire prosecution process. Please call for a quote.

The total prosecution time required is approximately one year. These estimates assume that no adverse party opposes your registration.

Sample Timeline: Intent to Use Wordmark application for YAHOO!
(Yahoo's application went smoothly.)
1998-09-08 - REGISTERED-PRINCIPAL REGISTER (Registration Number: 2187292)
1998-06-16 - PUBLISHED FOR OPPOSITION
1998-05-15 - NOTICE OF PUBLICATION
1998-03-17 - PUBLISHED FOR OPPOSITION
1998-02-13 - NOTICE OF PUBLICATION
1998-01-21 - APPROVED FOR PUB - PRINCIPAL REGISTER
1998-01-21 - USE AMENDMENT ACCEPTED
1997-12-02 - COMMUNICATION RECEIVED FROM APPLICANT
1998-01-09 - AMENDMENT TO USE PROCESSING COMPLETE
1997-12-02 - USE AMENDMENT FILED ($100 fee)
1997-08-04 - NON-FINAL ACTION MAILED
1997-07-11 - ASSIGNED TO EXAMINER
1997-07-02 - ASSIGNED TO EXAMINER
1997-02-28 - Filing Date ($245 filing fee in 1997. Fee is currently $325)

PTO FEES BEFORE REGISTRATION

FILING FEE (upon filing $325/class): The filing fee is made to the Commissioner for Trademarks

ALLEGATION OF USE PETITION ($100/class): Only necessary if the mark has not been used in commerce upon filing the application.

ISSUE FEE ($100): One flat fee for the issuance of the registration papers.

Q: IS THERE ANOTHER FEE FOR PROTECTION? Who is the UNITED STATES TRADEMARK PROTECTION AGENCY?
A: They are not the government. They send official looking junk mail to millions of people every year. Please feel free to ignore the junk mail because it is not an official notice. They provide a valuable service by sending you junk mail because it verifies that your address is known to the public, and current with the US Trademark Office.

PTO FEES AFTER REGISTRATION:

AFFIDAVIT OF USE (6th year $100/class): After registration, an affidavit of use must be filed between the fifth and sixth anniversary of registration Issue date. If a trademark registration was issued in 1/1/2000, the 5th anniversary would be 1/1/2005 and the 6th anniversary would be 1/1/2006. The affidavit of use costs $100/class. Failure to file the proper papers abandons the mark.

RENEWAL FEE (every 10 years $400/class): Once a mark is registered the owner may use and maintain it forever with a renewal fee of $400/class paid every 10 years. The first renewal fee must be paid in the 6 month period preceding the expiration of the registration. It may not be filed prior to the six months, but there is a "grace period" of three months following the expiration of a registration during which an application for renewal may be filed on payment of the required additional fee. See 37 C.F.R. §2.182. An application filed during the three months following expiration is commonly called a late or delayed application to renew. A late fee of $100/class applies if the renewal fee is filed late. Failure to file the proper papers abandons the mark.

The verification of fees and further detailed information can be found at the USPTO website: www.uspto.gov

Also, you can check the status of your Trademark at tarr.uspto.gov