The United States Patent and Trademark Office, the government agency responsible for trademark registrations, provides up-to-date, comprehensive guides and toolkits:
It’s important to note that the USPTO is a SELF-FUNDED AGENCY.
This means they are incentivized to make every effort to help you through the application process. Well, it’s in their self-interest because they charge a flat fee for examining your application; poorly prepared applications cost them more time and resource.
Please do not ignore what they say “basics”. They are basics in the sense that you MUST KNOW THEM before applying for registration. It’s your first step toward legally securing one of your most valuable assets, your brands.
Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (SeePossible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.
Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.
Are the maximum service fees set by Amazon fair?
Assuming that the law firms participating in the IPAP charge the maximum fees set by the program, we compared the service charges as below:
As you can see, the cost savings in non-flat fee structure is significant. Nevertheless, because most Amazon sellers do not have their own lawyers who can do trademark prosecution at a competitive rate, they prefer to find one with a flat fee structure.
Unfortunately, the flat fees set by the IPAP, or advertised online, do not tell the whole story. Even if reviewed, researched and filed by a professional, a trademark application can be still subject to an office action (“OA”) by the USPTO for various reasons. When the time comes, service providers who set their flat fees too low will try to recoup their actual cost. Note, office actions must be responded in writing however simple or trivial they might be. This really opens the door for unethical conducts by service providers.
IPfever attorneys handle OA as it should be. If it involves a simple amendment to the identification of goods and services, the cost may be as low as $20. There are attorneys charge flat fees for OA, which do not make any sense because while some OA might require an extensive legal argument to overcome, others may be resolved with a simple email to the examiner.
Every attorney at IPfever wants to be your long-lasting partner (not a one-time trademark application service provider), and our fee structure as well as the workflow prevent attorneys from taking advantage of clients’ unfamiliarity with the process. That explains the unbelievably low cost associated with an average case at IPfever. In fact, most trademark cases are quite straightforward.
Then, is there a backlog created by the increase of Chinese trademarks?
I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.
Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.
When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.
After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.
So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.
Above is a cumulative showing of trademark fees (government fees only).
Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?
This calculation doesn’t include a one-time filing for incontestability in the 5th year for $200, which is technically optional.
However, if you don’t do it correctly, there are penalties.
When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.
Aside from that, there are legal fees.
Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.
As a result, your cost can vary widely depending on your trademark and how you proceed with it.
Please note that increases in UPSTO fees in 2021 are not reflected above.
Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.
The easiness comes with a risk.
For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.
So there’s $99 (plus application fees) trademark registration services online.
Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.
There is a reason for such a low price.
Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).
