IPfever

Atlanta law firm for global business

Tag: registration

  • How to DIY: USPTO trademark registration

    How to DIY: USPTO trademark registration

    The United States Patent and Trademark Office, the government agency responsible for trademark registrations, provides up-to-date, comprehensive guides and toolkits:

    Trademark basics | USPTO

    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.

    More helpful reads

  • 2-min guide to IPs for retail business

    2-min guide to IPs for retail business

    Let’s say you were to sell t-shirts.

    What do you want to protect?

    A. Words, logos, etc

    B. Product design

    C. It’s all in the making. (e.g. special sewing technique)

    A. Words, logos, etc

    These are called “trademarks”. Trademark is a way to tell people that products bearing the “words, logos, etc” are from you.

    Once you register your trademark with the USPTO, you put everyone in the U.S. on the notice that you own the trademark.

    This makes it easier for you to stop others from selling fake goods/services that pose to be yours.

    Average client spends about $710 including all government fees and other expenses to get a trademark registered.

    The amount is based on actual billing data for IPfever clients’ trademarks that are registered in the past two years as of writing this article.

    B. Product design

    You can get “design patent” for the ornamental feature, like the wing-shaped sleeves.

    Once you patent the design, you get a legally sanctioned monopoly for the design in the U.S. for more than a decade.

    Getting a design patent can be a tedious and expensive process. However, for industrial design, it’s often the only option.

    Average client spends about $4,020 including all government fees and other expenses to get a design patent.

    The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.

    C. It’s all in the making.

    Manufacturing techniques,

    special treatments,

    textile printing method,

    special construction,

    and more

    When people say “patent”, they mean “utility patent”.

    If you developed a new product, it’s likely you invented something. In other words, unless you copied someone else’s goods/services without a single improvement, there is something you can patent.

    Nevertheless, it is important to understand that patent doesn’t protect a product as a whole. It rather protects a specific feature of the product. Sometimes, the patented feature is so minor that others can outcompete you without it, making the patent useless.

    Average client spends about $7,600 including all government fees and other expenses to get a utility patent.

    The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.

    Of course, there are more ways to protect your IP, but the above three should give you a head start.

  • Trademark Maintenance: does trademark registration expire?

    Trademark Maintenance: does trademark registration expire?

    Maintaining registration calls for both administrative and executive action.

    Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.

    On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.

    You need to monitor your registration status and enforce your trademark rights yourself.

    Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.

    The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.

  • Trademark Registration: do I need to hire an attorney?

    Trademark Registration: do I need to hire an attorney?

    Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.

    Let’s compare these two options.

    Do it yourself Professional Help
    Mark Your choice of wording and design Likely a better wording and design
    Registration online trademark search/registration via your representative
    Cost USPTO fees + $100 commercial service fees USPTO fees + up to $2,000 attorney fees + design cost

    Trademark registration is not too complicated.

    Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.

    USPTO offers an online application form through TEAS (Trademark Electronic Application System).

    There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.

  • Cheapest Way to Protect Your Trade Name (or Trademark, Servicemark, etc)

    Cheapest Way to Protect Your Trade Name (or Trademark, Servicemark, etc)

    Have you been to a Burger King restaurant in Mattoon, Illinois? I mean the other Burger King restaurant. There is a restaurant called Burger King, which has nothing to do with Burger King franchise.

    (more…)
  • When to Register Trademark?

    When to Register Trademark?

    Most clients come to me after their products reached the market. In fact, that’s when you know for sure that your product has the potential to be something. If not, why invest in registering trademark?

    On the other hand, most big companies register their intent-to-use (“ITU”) marks months before they actually develop or start selling an item. Why? It’s simply much safer to invest their money into marketing and so on once you know that nobody else has or can have a trademark registration on your potential mark.

    Does this mean you also need to act fast? Probably not. Simply put, many new products or services eventually fail. This is not because of some poor planning or lack of insight but because of the nature of the market.

    Then, when is the right time to register a trademark? The answer depends on the type of your mark.

    Is it your company name?

    Maybe you intend to use a certain mark for every single product you would produce in the future. This is sometimes called a Parent Brand. For example, under parent brand Apple there are sub-brands such as iPhone, Mac, and iPad. But everything is still Apple. Well, in this case, what are you waiting for? Go ahead and register unless you’re counting days for the demise of your company.

    Is it a logo?

    Now you be cautious. Once you register a mark, you can’t change the registered mark. This includes minor changes and renewals that most companies eventually do on their logos. It might be a slight change of color, or it could be a modernization of some characters or graphic. The law is clear: no change is allowed.

    Hence, if your logos are still in development, I’d suggest you to wait till you have the final version. Nonetheless, there is some benefit from acting fast. If you have a logo registered, other people are stopped from registering similar logos. In other words, you would claim the priority, and priority is always good.

    I suggest you act fast if you’re concerned that someone else might be taking your idea or concept of a logo. If the current version of your logo includes all elements that you consider important, registering it would give you priority for those elements.

    On the other hand, if your logo is pretty unique and unlikely anyone else would be interested, then don’t hurry into registering a draft in order to avoid incurring unnecessary cost.

    Is it a phrase or a combination of words?

    Now, this is a business decision. Think about how valuable your trademark would become in months or even years. There is possibility that you might not be using the phrase or words ever. Do you still want to take the risk of spending your money for a
    trademark certificate, which can become a piece of paper if things go the wrong way?

    Is it a made-up word?

    This is a real advice you would get it from this article. You go ahead and register a domain name YOUR_TRADEMARK.com. Sure, domain names are the same as trademark registration. On the other hand, it costs only $12 a year. Trademark application on the other hand costs you $250 (after discount for doing everything including filing and amending your application on TEAS) just for application fees alone.

    I’m not saying domain names can somehow replace trademark protection. However, it just makes economic sense to get a domain registered first and then think about getting trademark registered later.

  • Trademark Registration – IPfever Way

    Trademark Registration – IPfever Way

    I guess you can file a trademark application yourself, which will cost a bit over $200 in government fees (for a long-term cost analysis, see https://www.ipfever.com/how-much-does-a-trademark-registration-cost/ ).
    Here, the worst case scenario is you get a rejection letter (called Office Action). If there’s a mistake, you can amend it. In other cases, you can probably go around the problems. These will cost extra time and fees, but still you save money by not paying service/attorney fees.

    Or you can use an online service, adding extra service fees (like $69 seen on today’s Google Search ads) to the calculation.
    Here, you will likely save a good amount of time, and the process will be much enjoyable than filling out the government-designed application. Yup, it’s fine printed and for online versions, you will meet the old internet. Long story short, I think any help is better than no help.
    Don’t expect a legal guidance though. You can hope the computer will one day replace the attorneys; it’s not today guys. There are other reasons, too. For example, the service would constitute an Unauthorized Practice of Law if it renders a legal advice without a license.

    Alternatively, you can find a licensed attorney and pay much more.
    Well, you saw this coming, right? An attorney defending the merit of legal counsel! Don’t worry. That’s not the point. I totally believe that you can DIY. The problem is that you will never know if you’re doing it right.
    Starting from “Is my name/logo/mark trademarkable?” to “What’s the best way to protect my business interest?,” all entrepreneurs come across questions regarding trademark. However, lawyers typically don’t like answering piecemeal questions.
    Thankfully, IPfever is where you can ask questions and seek help from attorneys; you do everything you can do yourself and leave only the rest to the attorneys.

    You can request a free consultation. Also, you can simply choose to browse through articles from how to file a trademark application to basics to learn even when you don’t have your trademark yet or haven’t started your business.

  • US Trademark Backlog in the 1Q 2018?

    US Trademark Backlog in the 1Q 2018?

    There’s been reports about a huge number of applications, originating from China. See e.g. this WJ article at https://www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-s-officials-1525521600.

    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.

  • How much does a trademark registration REALLY cost?

    How much does a trademark registration REALLY cost?

    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.

    by YJ on 12/30/2020
  • Tax forms are complex and lengthy, but they can’t go south.

    Tax forms are complex and lengthy, but they can’t go south.

    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).