Archives For trademark search

How Much Does a Trademark Application Cost?

January 12, 2016 — 1 Comment

A common question many startups and small business owners ask is how much will it cost them to get a trademark registration with the United States Patent and Trademark Office (the USPTO).

Generally speaking, most applicants will spend several hundred dollars on the application, plus additional fees for lawyers and search companies. In this post we will break that down.

USPTO Application Fee

Depending on which application you file, you will likely pay $250 or $350 The cheapest option, $250, is only available if you use the USPTO’s online application process and agree to use a pre-approved goods/services description. In most situations, you will be able to do that.

Keep in mind, however, that if you file an Intent to Use Application (sometimes called a 1(b) application), then you must pay an additional $100 at a later date when you file your Statement of Use (evidence showing actual use of your mark in commerce).

Trademark Search Fees

Although you can perform your own trademark search, you are usually better off using professional help to make sure you have superior rights in the mark you want to register. Sometimes the attorney helping you file the application has the tools necessary to perform the search. But other times they will recommend a third party perform the search. In either event, it is likely to cost you at least $700 to obtain a professional trademark search and sometimes a lot more depending on what you want to search.

Although it can be expensive, performing a search is a good idea because it can prevent a lot of headaches down the road if you try to protect a mark which someone else is already claiming.

Trademark Attorney Fees

You will also likely want to hire an attorney to assist with your search and your application. There are many benefits to hiring an attorney to help. First, an attorney can help you decide whether you can even protect your mark in the first place (because some marks cannot be registered). Second, they know the ins and outs of the application and can increase your odds of getting the application approved. Third, they understand what to look for in a trademark search and might spot something you might miss. Fourth, if your application is denied, you will absolutely want legal assistance to respond to the denial and having an attorney assist you from the start will be better than bringing in an attorney later. And there are more benefits, but that’s for another post.

So what will they charge? It depends. Some will charge you over $3,000, while many will charge you less depending on the work load involved. For example, at mightymarks.com we charge a $1,495 fixed fee to provide counsel, research, an opinion, and to draft the application.

The Total Cost

In the end, if you obtain a professional search and get legal help, you will likely spend between $1,745 to $1,995 to get your application drafted and filed. But also note that if the application is denied, most attorneys will charge extra for time spent handling an appeal (if you appeal).

Want to Get Started?

If you want to file a federal trademark application, we can help! Just head over to mightymarks.com to learn more.

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Image: Adobe/gustavofrazao
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Best Practices for Choosing a Business Name

July 7, 2015 — Leave a comment

One of the earliest decisions a new business owner must make is what to call the new venture. There are many considerations including marketing, branding, and others but in this post we want to cover some of the legal considerations.

First, check the name availability with your state.

In order to form a LLC or Corporation, you must file formation documents with your state’s Secretary of State. As a result, the Secretary of State maintains records on all active and inactive businesses registered in the state.

This is often the first place you should search for name conflicts because a Secretary of State will not allow two active businesses to have identical legal names.

For example, if you want your legal name to be Hot Spot Technology and someone already registered a business with that name your application will be denied. But you can change your name to Hot Spot Technologies and get it approved (at least as the company’s legal name with the state).

But you have to look further!

Second, check the USPTO records.

While state business registries are concerned with identical names, trademark law is concerned with “confusingly similar” names.

The first trademark database to search is the United States Patent and Trademark Records. You should read our post on how to search the USPTO database, but in short, what you are looking for is any registration that is confusingly similar to your intended name that is also in a similar market. For example, if Hot Spot Technology sold grass seed, and your company with the same name wanted to sell computer chips, you can still probably get it approved.  However, if you also wanted to sell grass seed, you couldn’t get a registration on your favorite name or even the Technologies version mentioned above because the marks would be confusingly similar and in the same goods/services area.

So, while you can have a legal name of Hot Spot Technologies, you’d have to have a different name under which you do business (a DBA or Fictitious Name).

But that’s not all!

Third, check the common law.

As you may have read on this blog before, trademark law is comprised of both statute and common law. As a result, you need to run a common law trademark search. The post mentioned above covers this too, but the short version is you need to run internet searches, look in trade magazines, newspapers, and more, all to make sure there are not any unregistered marks out there that might cause you problems.

Ready to File?

If you are ready to file for a federal trademark, you should check out MightyMarks.com; our online digital trademarking service.

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Image: Thinkstock/olm26250
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Learn About Competitors Using the Trademark Status and Document Retrieval Service

June 10, 2015 — Leave a comment

A little known fact about the USPTO trademark database is that you can use it to dig up information about your competitors.

Here’s how.

First, run a search.

Using the USPTO’s search tool, you can search for trademarks similar to yours, names of applicants/competitors, and other search terms. Then, skim through the results to see if anything looks relevant. However, unlike when you search for potential trademark conflicts, in this case you want to look for “live” and “dead” marks. This is because we are trying to learn about your competitors, not so much about the marks themselves.

Second, enter the TSDR.

Once you have pulled up an application or registration, click on “TSDR” in the upper right corner.

The initial page will give you a summary of the registration or application. This can be helpful, but the next step is better. Click on the “Documents” tab at the top of the page to reveal all of the records relevant to that registration/application.

Third, dig!

The documents in this tab contain all kinds of information that might be useful to you.

You can learn about whether your competitors are using an attorney to handle their application by looking at the correspondence information. You can learn whether your competitor was denied in the application process and how they responded to the same. You can also review the specimens and evidence of use which they provided the USPTO to obtain a registration, which may provide useful information to you in terms of what they are selling and how they are marketing their goods/services.

You may also accidentally stumble on another party that objected to your competitor’s application. If you see that, then you can dig further to see what marks they own or claim to own and what arguments they made against your competitor’s application.

Next Steps

Then, after you have dug up all of this useful information, you can use it in several ways. You can use it to better prepare your own application and you can use it to improve your marketing strategies once you learn what your competitors or doing or are planning on doing.

And if you need help reviewing these documents, you can always seek the advice of a trademark attorney.

Sign Up

If you find these tips useful, be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues

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Image: Thinkstock/moodboard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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The Benefits of Using an Attorney to Conduct a Trademark Search

February 3, 2015 — 5 Comments

Conducting a good trademark search prior to filing an application is a critical first step that many businesspersons overlook. In a previous post (How to Perform a Trademark Search) we walked readers through various sources they may want to search including common law sources, business name databases, and the USPTO records.

While you can do it on your own, there are a number of advantages to seeking the help of a trademark attorney. In this post we will explore some of those benefits.

Common Law Searches Reveal A Lot of Marks

While the USPTO maintains a very large database of registered trademarks, those are not the only ones you should research. This is because trademark rights stem from first use in commerce, not registration. As a result, you should always conduct a common law trademark search to see what marks are being used in commerce already.

A trademark attorney will know where and how to conduct this kind of a search. You should be looking online, in newspapers, magazines, and other sources. Additionally, a trademark lawyer is uniquely qualified to examine each potential mark to see who uses it, where they use it, when they first started using it, and whether their use is in connection to any similar goods or services you seek to provide. They can then weigh in on whether you have good rights or not.

Business Name Records Can Be Misleading

A trademark attorney can also search state business name records. Sometimes a registration for a business name or fictitious name can cause conflict and may prevent you from having strong rights. However, an experienced trademark attorney can look at additional details regarding these files to see if the name is still in use, if it has been terminated, as well as whether the use constitutes use in interstate commerce.

USPTO Records Are Complex

Lastly, a trademark lawyer can perform an exhaustive search of the USPTO database. Most basic searches will reveal many results and an attorney can help to narrow your search to look for marks that might be confusingly similar and in the same international class as your mark. Her or she can also use judgment in deciding what other searches must be ran, such as design code searches and searches for similar or misspelled words.

Then What?

After conducting these thorough searches your trademark attorney can advise you on the odds of obtaining a registration. While it is often difficult to put odds in writing, a trademark lawyer can offer good guidance on when you should not file an application due to a likely denial.

That can save you a ton of money!

If you want help searching for existing marks or filing a trademark application with the USPTO, be sure to check out MightyMarks.com. Our online platform, coupled with years of trademark experience, make us uniquely qualified to help businesses protect their trademarks.

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Image: Thinkstock/Woodkern
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to Perform a Trademark Search

May 28, 2014 — 13 Comments

The best way to perform a trademark search is to use an attorney experienced in trademark law or the services of a search firm. Of course, prior to paying for a professional search, it is advisable to perform a preliminary “knockout” search on your own. Here’s how to get started.

Common Law

First, search “common law” sources such as online search engines, social media, domain names, trade publications, relevant magazines, news websites, phone books, and similar sources. You should search your mark and also similar marks. For example, if your mark is “Two Step Bar and Grill” you should also search for “Too Step/s,” “2 Step/s,” etc. There are thousands of places like this you could search and a professional can provide immense value when searching common law records because they have access to large databases of common law sources.

Business Names

Second, you may want to run state searches. While not nearly as vital as a federal trademark registration, the state trademark databases can be helpful, particularly in the home state of the client. Specifically, each state will have official business name records and many also have their own state level trademark registration databases and also fictitious name registrations. Those sources will usually be found through the Secretary of State’s website. And if you plan to expand to more than one state, then search those additional states also.

The USPTO Database

Lastly, and most importantly, be sure to search the USPTO database. But be forewarned, searching USPTO records can be a daunting task. Many clients think it’s a simple task… it is anything but simple. For example, a basic search for “Delta” reveals almost 2,500 results. But with a few quick tips, we can make it easier to perform this search. Trademark professionals often use sophisticated software to search the USPTO database and compile search reports. For a quick examination on the USPTO database first click on “Trademark Search” on the USPTO Trademark Website.

Once there, you have several options. You can run a “structured” search to find narrow results or a “basic” search to find broader results. To keep things simple, let’s go with a basic search. You can make a few selections on this page. You should usually search for “Plural and Singular” rather than just “Singular” and you might consider searching just “Live” marks. A “Live” mark is a registered mark or a mark currently in the application process. A “Dead” mark is a mark that was refused registration or a mark that was once registered but at some point lost the registration. (extra tip: you shouldn’t ignore dead marks altogether because they can revel interesting facts about prior users, litigation, and sometimes current users that simply lost a registration)

After you’ve run your search you will likely find a list of marks. You should examine the potentially similar marks to see if they are associated with any goods or services similar to your goods and services. If they are, you might have trouble registering your mark. But remember our prior lesson about how similar marks can be registered if they are applied to different goods and services.

You can spend hours in the USPTO database. When you get stuck, contact an expert. And feel free to call on Mighty Marks® if you want assistance with your search.

Image: Thinkstock/triloks

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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