What's the Trademark Registration Process and What Does It Cost?
Trademark Registration Process and Cost
What Is a Trademark?
According to the U.S. Patent and Trademark Office website, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term “trademark” generally refers to both trademarks and service marks.
Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from actual “use” in commerce. As a result, a trademark can last forever - so long as it is used in commerce to indicate the source of goods and services. A trademark registration can also last forever - so long as you file required renewals and pay the applicable USPTO fees (discussed below in the “Trademark Process” section).
Trademark Process Summary
In this post, we will discuss the specific steps in the federal trademark registration process as well as average costs to be expected to obtain the TM registration, the differences between trademarks and other forms of IP, and common FAQs regarding trademarks.. Specifically, we will discuss:
Trademark Registration Process — The benefits of obtaining a federal trademark registration, trademark searches, preparing and filing a trademark application, prosecution of the trademark with the U.S. Patent & Trademark Office, filing the Section 8 & 15 filings, and trademark registration renewal requirements.
Trademarks versus Other Forms of Intellectual Property (Copyrights/Patents) — The differences between the rights granted by a trademark versus copyrights, trade secrets, and patents.
Common FAQs Regarding Trademarks — Common questions about trademark law and answers
For more information regarding trademark legal services, see our Trademark Services Overview page.
Trademark Registration Process
Benefits of Federal Trademark Registration
The benefits of federal trademark registration are substantial and include:
Presumption of Ownership of the Trademark — A federal registration provides the registrant with a presumption of ownership of the trademark and further includes claimed dates of first use and first use in commerce.
Presumption of Validity of the Mark — A federal registration also provides prima facie evidence of the validity of the mark and the registrant’s exclusive right to use the mark.
Nationwide Priority — One of the most important benefits of trademark registration is the granting of nationwide priority of trademark rights against those who later use a confusingly similar mark.
Incontestable Status After 5 Years of Use — After five years of exclusive and continuous use, a registered trademark becomes “incontestable.” This prevents certain aspects of the trademark registration from being challenged unless it has become generic, it has been abandoned, or it was obtained by fraud.
USPTO May Reject Similar Marks — After a trademark application is filed, the USPTO Trademark Examiners conduct searches for related marks. Because a federal registration creates a record, the registration may result in future third-party trademark applications being denied.
Right to Use the ® Symbol — Until a trademark achieves a federal registration, the ® should not be used.
Enhanced Damages Against Counterfeiters — Under the Lanham Act, enhanced damages are available against counterfeiters of a registered trademark. Statutory damages are available for registered trademarks.
Protection Against Cybersquatters — To prevail in a UDRP proceeding, the trademark owner must prove protectable trademark rights and bad faith registration by the domain name owner. A federal registration for the trademark enhances the success of this proceeding and reduce its costs.
Protection Against Importation of Infringing Product — A trademark owner can register its trademarks with U.S. Customs and Border Protection, which in some cases will monitor, seize, and detain imported goods that infringe the registered trademark.
Basis for Registration in Foreign Countries — Under the Madrid Protocol, owners of U.S. federal registrations can extend their trademark rights to other countries that are part of the Madrid Protocol.
Use in Takedowns for Online Sales/Websites — Certain online sales platforms, like Amazon and eBay, as well as domain name registrars will consider federal trademark registrations in determining whether to takedown infringing sales or other acts of trademark infringement.
Trademark Symbols — SM, TM, and ®
It is best practice to use a trademark symbol in connection with use of your trademark to communicate ownership of the mark to the public and potential competitors. The TM symbol should be used with physical goods and the SM symbol should be used for services. These designations indicate a claim to common law ownership of the marks. If the trademark is federally registered with the USPTO, the ® symbol should be used to communicate to the public a registered trademark.
Business Name as a Trademark
Often, a business will desire to register its business name as a trademark. While in many cases the business name may function as a source identifier and therefore qualify as a trademark, that is not always the case. To be protectable as a trademark, the mark must be used in commerce to identify a particular good or service. The name of a business does not necessarily meet all of those requirements. Additionally, some businesses have names that are separate and distinct from their services/goods.
Many states and local jurisdictions allow for the registering of business names, either as part of obtaining a certificate to do business or as an assumed name filing often referred to as a “dba”. In Texas, an applicant can apply to form a LLC, partnership, or corporation and as part of that process, the Secretary of State will conduct a name search to determine if any other registered entities have names that conflict or are deemed too similar. If the search is clear, the Secretary of State will allow the name to be registered. In addition, a business can also file a dba in a Texas county. But the registration name and the dba name do not normally constitute trademark rights by themselves since trademark rights require use in commerce of a source identifier.
Trademark Checklist
Before filing a U.S. federal trademark application, you should gather the information and documents necessary to support filing the application. We recommend the following at a minimum to prepare the application:
Mark to be Protected (word or design mark)
Owner of the Mark (individual or entity)
Owner Address (not a PO Box)
Goods and/or Services (describe the product or service the mark will be used in connection with and attach samples of how it is actually used, if already in use)
Use-Based Application/Intent-to-Use Application
Dates of Use/Use in Commerce (anywhere and in commerce)(if not yet in use, an intent to use trademark application could be filed)
Samples of Use
A simple trademark application checklist is a helpful tool to ensure the proper information and documents are gathered for the application. After the application is filed, we recommend adding to the file copies of dated documents establishing use in commerce of the trademark. These documents will be helpful in the event you wish to enforce the trademark in the future.
Trademark Registration Process
The trademark registration and maintenance process has the following steps:
Trademark Searches — Before filing a trademark application, you may wish to conduct a trademark search to determine the likelihood of success in filing the application. The advantages of the search is avoiding filing an application that will fail or worse lead to a cease and desist later from a third party. A search can also reduce the costs of prosecuting the trademark application. The disadvantages of a search is additional cost, delay to conduct the search, and a claim of willful infringement later if a third-party files a trademark infringement claim. Average costs of searches can vary based on the attorney performing the services. You should expect $500-$1,000 for a basic trademark search and $1,000-$3,000+ for a comprehensive search.
Preparing and Filing Trademark Application — Assuming the search results are positive or no search was conducted, the next step is preparing the trademark application and filing it with the USPTO. An average cost for an attorney preparing and filing the application can range from $500-$1,000 (one class of goods/services). The USPTO also charges a filing fee of $225 to $600 per class of goods/services (spending on whether electronic vs paper filing, and certain type of goods/services).
Prosecution of the Application with the USPTO — Once the application is filed, prosecution begins and a Trademark Examiner is assigned. This typically can result in the Examiner issuing an office action regarding the application. Once all objections are overcome, the application is published for opposition and if no opposition is filed, the application will eventual be allowed and registered.
Registration of the Trademark — If the application and prosecution is successful, the USPTO will issue an official registration along with a registration date. If the original application was filed under 1(a) (use based), then no further fees or filings are required. If the application was filed under 1(b) (intent to use), then the applicant must file a Statement of Use and pay an additional fee of $100 per class of goods/services.
Section 8 & 15 Filings — Between the fifth anniversary and the sixth anniversary of the registration, the applicant can file a Section 8 declaration of continued use. After the Section 8 filing is made, the registrant may also file a Section 15 declaration of incontestability. The current filing fee for the Section 8 and 15 filings are $125 and $200 per class of goods/services.
Trademark Registration Renewal — On the 10th anniversary of the trademark registration, the owner is required to file a renewal and pay the renewal fee (currently $300 per class of goods/services) to the USPTO. A renewal filing is required every 10 years going forward.
Trademarks Versus Other Forms of Intellectual Property
Trademarks vs Copyrights
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. The duration of copyright protection depends on several factors. For works created by an individual, protection lasts for the life of the author, plus 70 years. For works created anonymously, pseudonymously, and for hire, protection lasts 95 years from the date of publication or 120 years from the date of creation, whichever is shorter.
While trademarks act as source identifiers and copyrights are creative expression of ideas, there can be significant overlap between the two rights. For example, a logo can be protected by both trademark law and copyright law. Trade dress is a special type of trademark that protects the distinctive features of a product’s packaging or in some cases the non-functional aspects of the product itself. These features can sometimes be protected by copyright registrations.
Trademarks vs Patents
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. Patentable materials include machines, manufactured articles, industrial processes, and chemical compositions. The duration of patent protection depends on the type of patent granted:
Design Patents - 15 years from issuance for applications filed on or after May 13, 2015 (14 years from issuance if filed before May 13, 2015)
Utility patents and plant patents - 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.
As discussed above, unlike the limited duration of patents, trademark rights can be forever as long as there is continued use in commerce. For more information on the patent process and costs, see our post, Have an Invention -- What are the Next Steps to Get a Patent?
Trademarks vs Trade Secrets
A trade secret is often defined as a formula, pattern, compilation, program, device, method, technique, or process that provides the owner a competitive advantage. Like trademarks, trade secrets are protected by both common law and federal law. However, unlike trademarks that require public use, trade secret rights are based on keeping the “trade secret” confidential and outside of the public domain, particularly competitors.
Trademark Registration FAQs
The following is a commonly asked set of questions regarding trademark registration and trademarks in general:
1. Why should I register my trademark?
One of the most important benefits of federal registration of a trademark is nationwide priority against any who would later attempt to use the same or a confusingly similar mark. Federal registration also provides the mark’s owner with a presumption of ownership and validity of the mark over others who are not registered, and can be used to stop unauthorized use of the mark, as well as the unauthorized sale of your goods or services associated with the mark. See our page on trademark registration.
2. Do I need a trademark to sell my product or services?
Having a trademark is not a pre-requisite to selling products or services. However, as discussed above, having a trademark (particularly a registered trademark) more readily identifies you as the provider of your goods or services and makes you and your goods or services more easily identifiable (and more memorable) among the consuming public. Additionally, federal registration of your trademark allows greater protection against others who may seek to “knock off” your brand, logo, or slogan in connection with similar goods. See our page on trademark registration.
3. What do the different trademark symbols mean and why/when do I need to use them? (® TM SM)
The TM symbol is used to signify a trademark (registered or unregistered) related to physical goods. Conversely, the SM symbol is used to identify a mark (registered or unregistered) used in connection with services. The ® symbol is reserved for only those marks that have been accepted and formally registered with the United States Patent and Trademark Office.
4. Is trade dress different than a trademark? What about a copyright? How do I know what I need?
According to the United States Patent and Trademark Office, a trademark is a particular word, phrase, symbol, or design associated with the source of specific goods or services and is used to identify a seller as the source of those particular goods or services.
Trade dress is a subcategory of trademark and generally refers to the overall look and feel of goods or services that identify the source of those goods or services and distinguish the source from others who may deal in those goods or services. Examples of trade dress include the shape of the Coca-Cola bottle, and the design of Apple’s stores. See our pages on trade dress and copyrights for further information.
A copyright protects original works of authorship fixed in a tangible medium of expression and gives exclusive rights to the copyright owner to reproduce his or her work, to prepare derivative copies, to distribute the work, and to prepare or perform the work publicly. Copyrights typically are used to protect music, lyrics, books, plays, movies, poems, paintings, sculpture, photographs, architectural designs, and software. See our blog on Copyright Basics.
5. Do I need to do a trademark search? – If we have a blog post about trademark searches, you can link it in the answer.
A trademark search is not required prior to submitting an application to the United States Patent and Trademark Office. However, there are some advantages to conducting a search prior to submitting your application, including the opportunity to determine ahead of time whether there are any obstacles to the registration of your mark, which can reduce the overall cost of prosecuting your mark. The disadvantages to a trademark search may include a delay in filing your application, the additional cost of a search, or a claim of willful infringement later on if a third party brings an infringement claim against you.
6. What will I need to file a trademark?
In order to file a trademark application with the United States Patent and Trademark Office, you will need the following:
· The word or design mark to be protected.
· The owner of the mark and a physical address for the owner (no P.O. Boxes allowed).
· Identification and description of the goods or services to be used in connection with the mark. If your mark is already in use, you will need samples of how it has been used.
· Identification of whether yours is a use-based application (meaning your mark is already in use in commerce) or an intent-to-use based application (meaning use in commerce has not yet occurred).
· Dates of first use, both anywhere and in commerce.
For more information, see our blog posts on the Trademark Registration process and the benefits of trademark registration.
7. Once I file for my trademark, when can I start using it?
Use of a trademark may begin even before any application has been submitted to the United States Patent and Trademark Office and may be identified using the TM or SM symbols. However, use of the ® symbol is reserved for only those marks that have been accepted and formally registered with the United States Patent and Trademark Office. See our blog on Q&A on Trademarks.
8. How long is the registration process?
The process of registering a trademark with the United States Patent and Trademark Office can last anywhere from eight months to two years depending on the novelty of the mark and whether the Trademark Examiner lodges any objections to the application. On average, most applications proceed to registration within 12-18 months.
9. What is the lifespan of a trademark? Do they expire?
Unlike patents and copyrights, trademarks do not expire, but remain in effect based on ongoing use in commerce and compliance with the renewal and maintenance requirements (and fees) of the United States Patent and Trademark Office. See our blog on Trademark Registration and Maintenance.
10. Do I have to file for a trademark in the U.S. before applying for one internationally?
Yes. Before applying for international trademark registration, you will need to first secure a U.S. registration through the United States Patent and Trademark Office. Once you have secured a U.S. registration, the Madrid Protocol can be utilized to extend your trademark rights to other countries that participate in the Madrid Protocol. See our blog on International Intellectual Property Protection & Enforcement.
11. When creating a new business, when should I apply for a trademark? What happens if I wait too long?
It’s best to begin the trademark application process at the very beginning of the business creation process—if possible, well before selecting a brand or domain name or before creating logos, tag lines, letterhead, business cards, or other marketing or advertising efforts. Early application is the best means of protecting your investment in your business by ensuring that you have federal registration and protection in a particular mark before incurring these initial startup costs. If you wait too late to apply, you may find that your mark is already in use and registered by a third-party, or may have your application rejected on some other basis, requiring you to rebrand and lose the benefit of some of your earliest efforts.
12. What if someone else is using my trademark? What are my rights to get them to stop?
Your ability to protect your trademark will depend on priority of use—who used the mark first, in what geographic area(s), and in what context. If you have prior use of the mark, or your mark has been registered with the United States Patent and Trademark Office on the principal register, stopping any unauthorized use may be as simple as a cease and desist letter to the infringing party or as involved as a lawsuit alleging trademark infringement, depending on how the third-party responds to your demands related to his or her unauthorized use. See our Trademark Litigation overview and our blog on Anti-Counterfeiting and Enforcement Overview.
If a third party is attempting to register your mark or has successfully registered your mark and you have priority of use, we can assist you in filing an opposition or cancellation proceeding with the United States Patent and Trademark Office.
13. What are damages available for trademark infringement?
Damages for trademark infringement may involve any of the following: injunctive relief (a court order precluding future infringement), disgorgement of profits realized by the infringing party, other actual damages, reasonable royalty for the prior unauthorized use, attorneys’ fees in exceptional cases, and costs of court. See our blog on Trademark Infringement Damages under the Lanham Act.
14. What is trademark counterfeiting?
Trademark counterfeiting occurs when a trademark is affixed to goods or services that are not authentic to the brand. In other words, counterfeiting is when a third party affixes your trademark to a product that is not yours. See our blog on Anti-Counterfeiting and Enforcement Overview.
Additional Trademark Services
Our trademark law clients receive the full range of the firm’s services: litigation, intellectual property, transactional, and international law. Our trademark attorneys offer comprehensive trademark and brand development services including: