Should Your Trademark Be Registered? All Detail You Require To Know.

Businesses always wonder whether filing their trademark applications with the USPTO would be in their best interests.

Yes, you should register your trademarks if possible, is the brief general response. Many knowledgeable intellectual property lawyers have endorsed this counsel.

Small enterprises, non-profits, and individuals are only able to do some things a lawyer says they SHOULD do because of the current economic climate. The bottom line is more important than ever in Oregon, and trademark registration always costs thousands of dollars, which are thousands you could have spent on R&D, marketing, or payroll instead. As a result, I often find it helpful to talk with clients about what they CAN and MUST do and what they SHOULD do.

This article’s goal is to provide you with more financial data so you can determine whether to register your trademarks or not. Some attorneys will claim that it is “expensive.” Other clients may be told that it’s “not pricey” by the same attorneys. I’ll provide some accurate figures that you can use to create your budget.

First, remember that trademark registration is not necessary. Common law rights, of course, result from trademark usage. The primary right to use and register a trademark generally belongs to the first entity to utilise it in commerce or submit an intent-to-use application to the USPTO. But there are various benefits to registering a federal trademark in Principal Register and receiving it:

  • giving the general public constructive notice of the registrant’s ownership claim over the mark;
  • A presumed legal right to use the effect on or in connection with the products and services indicated in the registration and the exclusive countrywide right to do so.
  • the capacity to file a lawsuit in federal court about the mark;
  • the use of U.S. registration as justification for international registration;
  • The power to register with the U.S. Customs Service to stop importing bad produced items from abroad.

Ideally, all trademark owners who view their mark as a valuable business asset would prefer to benefit from these benefits (if not, why keep using the mark?). But signing up is not free. According to the USPTO’s most current Fee Schedule, which was changed on January 16, 2018, these are some of the potential fees you will encounter both before and during the registration process:

Clearance Lookup – It is recommended that a trademark clearance search be carried out to learn the availability of the trademark before adoption and use. This will enable you to confirm whether another user with greater rights is already utilising the trademark. A company can prevent liability for trademark infringement and avoid investing resources in a brand that would be useless due to a breach of another party’s trademark rights by conducting an initial trademark clearance search. Expect to pay $200 to $400 for the clearance search.

A commercial research firm, such as Thomson CompuMark, will cost about $700 to execute the search on its several databases. Attorney review and reporting on the outcomes should be added time.

Application filing fee– $275 to $325 is the official filing fee for each trademark. For the preparation and submission of the application, your attorney will bill a fee.

Submitting an amended statement of use or allegation of service– The functions of the Amendment to Allege Use and the Statement of Use is similar… They informed the USPTO that the trademark is currently being used in commerce. This is significant for applications that utilise a trademark, as registration cannot be achieved until the brand has been used in marketing. Your attorney will take time to get samples, prepare the required paperwork, and file it.

Extension of the Deadline for Submitting a Use Statement– $150. Up to six (6) deadline extensions for submitting a Statement of Use may be requested. Up to a largest of thirty-six (36) months, each extension is for six (6) months. Of course, there must be a price associated with each extension. Additionally, some attorney work will be needed to draught the extension.

Reaction to a work action – Office actions are letters from the USPTO that outline a trademark application’s current legal standing. Before approving an application for publication, the examining attorney, by and large, lays forth particular standards the applicant must follow. A Response to Office Action is not subject to a filing fee if too much. But, analysing and responding to office actions will ten to one take up most of your attorney’s time during the application process.

You should consider the renewal fees that must be paid after five (5) years as you look into the future. For each category of goods and services your trademark covers, budget at least $500. For instance, a band would have to pay filing costs for two different classes of protection if it wanted to protect its band name for both “musical services” and “t-shirts.” This also holds for filing costs.

You’re looking at about $1000 in filing fees for one trademark that protects one class of goods and services, excluding renewal fees and supposing no extensions, etc. You will pay your trademark attorney for each document created or filed and also made to these predetermined PTO fees. So, selecting a trademark lawyer who offers top-notch services at a reasonable price might improve your bottom line. Additionally, these are only a few more typical expenditures associated with trademark registration… Depending on the details of your trademark and your lawyer’s plan, extra filings or charges can be involved in registering a trademark.

So, should you file for trademark registration? The conventional response is still valid: if it is business workable, do it. Trademarks are critical commercial assets worth far more than any registration fees. Remember that while economies change, trademark rights last a lifetime. Unfortunately, this means that if you take less action now to safeguard your trademark rights, another party may be able to intervene and secure crucial trademark rights for the future. Remember to consider how not registering your trademarks can affect licencing options.

The “TM” (trademark) or “SM” (service mark) designation may be used to inform the public of your claim whenever you assert rights in print, regardless of whether you have applied to the USPTO. It’s free and helps those wearing the “marketing” hat to maintain positive habits.