BlogIntellectual PropertyStartupsTrademarkFAQs: Our Trademark Process

July 29, 2020by Jeffrey Davis0

Basic Fees for Trademark Applications

  • $350 for 1 class of goods/services
  • $400 for the clearance search/conflicts search
  • $500 legal fee for the application.
  • If a “Statement of Use” is filed separate from initial application: add $200

Prosecution and TTAB

  • Prosecution is the period of back and forth with the USPTO, fighting to get the application approved, and docketing and responding to office actions.
  • For applications without serious objection, the back and forth is minimal. This is the outcome in most applications that use unique, non-descriptive names (e.g. KODAK)
  • If the examiner digs in on a rejection, and we want to fight for it, we may have to appeal to the TTAB.  This is rare.
  • Other parties can oppose your mark, this starts a mini-litigation before the USPTO Trademark Trials and Appeals Board (TTAB) over whether you should get a registration.  This is rare.

It is important for clients to know that, at the end of the day, while preparing and filing the trademark application is a predictable task that we can do a fixed fee on, the later prosecution of that application is more like litigation – its an adversarial process between us and the USPTO.  We can be pretty confident which ones will be objected to, but it is really hard to predict with any accuracy more than that.  

This is why it is best for clients to pick names that are unique and non-descriptive.  E.g. consider “KODAK” for cameras.  KODAK is a made up word that has no meaning in any language, it is unique and non-descriptive, you could use it as a trademark on anything.  

The USPTO Process:

After the application is submitted, within 3-6 months the USPTO will issue a response. Commonly, the USPTO will issue an Office Action to discuss any substantive or procedural issues with the application/mark. A response is due within 6 months. The USPTO will then approve/deny the registration. If approved, the registration will be published for public opposition. Once the opposition period ends, a registration certificate will be issued based on use. 

If application was filed with a statement of use, the mark will receive registration status.  If the application was filed based on the intention of use, a statement of use need to be filed within 6 months. 

Registration updates are required between the 5th and 6th year (§8 or §8 & §15) and again between the 9th and 10th years (§8 & §9) to remain active.

You should allow for 12-18 months for the full registration process. Occasionally, a quicker turnaround can be warranted.

USPTO Filing Fees:

$359 per class, per mark. However, no additional fees are required during the normal processing, including Office Actions.

Statements of Use, if not filed with the application, are $100. Amendments and extensions range from $100-125.

USPTO Renewal Fees:

§8: $125 per class, per mark.

§9: $300 per class, per mark.

§15: $200 per class, per mark.

USPTO accepts payment by Credit Card, USPTO Deposit Account, Electronic Funds Transfer.  Fees are paid independently. USPTO fees listed for electronic filing and are subject to change.

Leave a Reply

Your email address will not be published. Required fields are marked *

© 2021 Davis & Byrnes

All rights reserved. The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters, and email. Contacting us does not create an attorney-client relationship. Please do not send any confidential information to us until we establish an attorney-client relationship. This site constitutes ATTORNEY ADVERTISING. Past results are no guarantee of future success.

Our Offices

New York City Office:

152 Madison Ave, 14th Fl
New York, NY,10016
Phone: (646) 448-5279

Westchester Office:

600 Mamaroneck Ave, 4th Fl
Harrison, NY 10528
Phone: (914) 293-6352

Get Updates