Posts Tagged ‘trademark application’

Trademark Registration, Cost of Trademark Registration

Sunday, February 14th, 2010

One of the most frequent questions I get asked by potential clients is, “How much is the cost of trademark registration?”  The answer is that you need to be concerned about two fees in the trademark registration process.  The first is how much you are going to pay a lawyer to conduct the trademark search and draft and file the trademark application.  The second is the US Government filing fee (Uncle Sam wants to get paid before they even review your application).

At Gerben Law Firm we try to make the trademark registration cost as low as possible.   As a potential client, you should understand that hiring anyone who is not a lawyer to conduct your trademark search and draft and file your trademark application is extremely risky.  There is a high likelihood that your application will be denied using a service such as Legal Zoom (I get a lot of calls from their dissatisfied customers).  Moreover, please do not believe that you can conduct a “free trademark search” and determine whether or not your trademark is available for use.  There is a lot that goes into conducting a proper trademark search that is impossible to do online.  Our search uses special software and is conducted by an attorney.  There is just no replacement for this type of search.   I have seen too many people rely on a free trademark search to file their trademark, only to have it rejected from the US Government (and thus lose all the fees they paid to have the trademark filed).

The cost of trademark registration at Gerben Law Firm as of February 14, 2010 is as follows:

Legal Fee: $495 Flat Rate (includes comprehensive trademark search and drafting and filing of your trademark application)

US Government Filing Fee: $275 or $325 per class (most applications require only one class)

Because each trademark registration is different, give me a call to get an exact quote on the cost of trademark registration for your trademark.  I can be reached directly at 1-877-350-6275.  I encourage you not to worry about saving a few dollars by using a service such as Legal Zoom.  If your application is not done correctly, you will lose your US Government filing fees and end up spending more in the long run to secure your trademark.  I invite you to call me at 1-877-350-6275 and register your trademark properly.

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What is a USPTO Office Action?

Tuesday, July 14th, 2009

I get a lot of calls from potential clients who have received an Office Action on their trademark application and want to know what it means.   An Office Action from the USPTO can mean a lot of different things.  It can be something as simple as the USPTO asking for a simple clarification on your application or something as serious as a denial of your trademark application (please note that a denial can always be appealed).

One of the most critical aspects of a USPTO Office Action is ensuring a response is filed with the USPTO within the deadline stated on the Office Action.   If you receive an Office Action for something as simple as a clarification of information on your application and do not respond by the deadline your application, your trademark application will be considered to be abandoned and you will lose all priority on your trademark.   Therefore, it is extremely important to treat any Office Action seriously and respond in the proper time frame.

Another critical aspect of responding to an Office Action is ensuring that you are properly responding to the USPTO’s requests.  Failure to properly respond to the requests can also lead to denial of your application.  Therefore, if you have been issued an Office Action it is highly recommended that you contact a trademark attorney so that the response filed is technically correct.

My law firm helps clients respond to all types of Office Actions.  Even if your trademark has been initially denied by the USPTO we can e draft a legal argument to attempt to overturn the negative decision.  The cost to respond to an Office Action will vary depending on the particular Office Action.  I offer a free trademark consultation to clients who are looking to respond to an Office Action.  I can be reached directly at (202) 294-2287 for this free consultation.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

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Can The Trademark Registration Process Be Expedited?

Wednesday, June 24th, 2009

Many clients call my office asking if they can pay the U.S. Government an expedited or rush fee to make the trademark registration process go faster.  Unfortunately, the answer to this questions is no.

Once a trademark application is submitted to the U.S. Government for review and approval, it takes between 6-18 months to receive a trademark registration certificate.  There is no option to pay a rush or expedited fee to the USPTO to move the trademark registration process any faster.  To many of my clients, waiting to see if the USPTO will approve their trademark seems like an eternity.  A whole brand can be built in 6-18 months and to have the USPTO deny the trademark application at that time could be devastating.

The best solution to this problem is to hire a competent trademark attorney that can give you an opinion on the registerability of your proposed trademark.  A trademark attorney can conduct a trademark search and give you an opinion on whether or not a proposed trademark is capable of registration with the USPTO.

Another piece of good news is that the USPTO trademark application process is first come, first servce.  This means that your trademark carries all the weight of a registered trademark as of the date you file the trademark.  No one else can try to register a same or similar trademark after the date of your filing, so long as your trademark application is ultimately approved by the USPTO.

Therefore, having the combination of a trademark attorney’s opinion that your trademark will most likely be approved by the USPTO and the fact that you have priority on your trademark as of the filing date should provide some sense of ease to a trademark applicant.

For more information on conducting a trademark search or registering a trademark contact Attorney Josh Gerben at Trademark Armor.

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How to register a trademark in the USA

Thursday, June 4th, 2009

Many international clients call my law firm to find out just how to register a trademark in the USA.  To register a trademark in the USA a company or individual must draft and file an application with the United States Patent and Trademark Office.

While this USA trademark application can be completed by anyone, I highly recommend to potential clients that they retain my firm to complete their trademark application.  The reason I recommend retaining a USA trademark attorney to draft and file a trademark application is because there are many technical and legal elements hidden in the USA trademark application.  If certain information is not entered correctly, it could lead to rejection of the USA trademark application and loss of any priority established on the trademark.

Moreover, to register a trademark in the USA it is imperative to first conduct a USA trademark search.  If a trademark search is not conducted prior to an attempt to register a trademark in the USA a client may not be aware of a pre-existing federal, state or common law trademark that could result either in the rejection of a USA trademark application or in a limitation of the client’s rights in their trademark.  Therefore, to register a trademark in the USA I recommend to potential clients that they retain my law firm to assist them in conducting a proper USA trademark search and then for the drafting and filing of the USA trademark application.

Once a USA trademark application is filed, a client must then wait for the U.S. Government to review and approve their application.  It generally takes about 8-10 months to register a USA trademark from the date the application is filed.  However, so long as the USA trademark application is ultimately approved, the trademark rights start on the date the USA trademark application was filed.  Therefore, when a client wants to register a USA trademark to protect their rights, they can be assured that no one will be able to attempt to register a USA trademark that is similar to theirs after the date of their USA trademark application filing.

To get started with the process to register a USA trademark please follow the link below.

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Can a non-U.S. company obtain a U.S. Trademark?

Monday, May 18th, 2009

I get a lot of inquiries from international clients wondering if they can file a U.S. trademark even though they are not a U.S. based company.  The answer is yes.  The United States Patent and Trademark Office does not have any special requirements for a non-U.S. company to register a U.S. trademark.

This is especially welcome news to international clients who are attempting to register a US trademark.  It allows the protection of valuable US trademarks without any cumbersome requirements (except of course proving that you are using the US trademark in the United States to sell a product or service).

However, it should be noted that international clients who are attempting to register a United States trademark should consult a U.S. attorney before filing a U.S. trademark.  This is because conducting a US trademark search and properly completing a US trademark application are tasks that only an attorney based in the United States can properly complete.

I have represented many clients from overseas in protecting their U.S. trademarks.  It is extremely important to conduct a US trademark search and complete and file a US trademark application prior to commencing business in the United States.  Many international companies are surprised to learn that a similar U.S. trademark may already exist and bar the use of the trademark they use in their home country here in the United States.  However, with proper planning expensive lawsuits can be avoided and clients can properly protect their trademarks in the United States.

If you are an international business looking to register a U.S. trademark please feel free to call Gerben Law Firm to find out how we can assist you in properly protecting your U.S. trademark.

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Should I Trademark My Name?

Thursday, May 14th, 2009

Many clients call me with a simple question: “Should I trademark my name?”  The answer is, almost all of the time, “yes.”  Obtaining a trademark on your name not only protects your name from potential trademark infringers, but also helps you ensure that no one else has been using your trademark prior to your use of the name.

When you undertake the process to trademark your name, a good trademark attorney will recommend that your first conduct a trademark search on your name.  This is because if someone else has filed a trademark for the same or similar name prior to your now imminent trademark application, the United States Patent and Trademark Office can deny your trademark for your name.  Therefore, the process of obtaining a trademark on your name is a good way to slow down and ensure the name you have selected can be used without infringing on another company’s trademark rights.

The second reason that the answer is almost always “yes” to the question of “should I trademark my name” is that when you obtain a trademark on your name you obtain the presumption of national ownership on the name. This is extremely important to a company that plans to expand in the future.  For example, even if your company’s operations today are only in New York and Pennsylvania, a trademark can help you expand to California in the future without any problems.  Let’s say that you expand to California in five years only to discover someone else has been using your name as their trademark.  If you had obtained a trademark on your name you can force this other company to stop using the name as their trademark (so long as their use began after the date you filed for your trademark).   If you had not obtained a trademark on your name, the California company could continue to legally used your name in California and force you not to use the name as your trademark in the California market.  Therefore, obtaining a trademark on a name is extremely important if you plan to expand outside of your current market.

As you can see, when you trademark a name it gives you a national right to use the name (and prevent others from using the name) as of the date your trademark application is filed.  After the filing date (presuming the trademark is ultimately approved) no other company can claim a trademark right superior to yours in the name.  In today’s competitive marketplace a trademark of a name can be an extremely valuable asset to any company.

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How to Get a Trademark

Friday, May 8th, 2009

I get a lot of calls from potential clients that start with the simple question, “how do I get a trademark.”  The short answer is that you must file an application with the United States Patent and Trademark Office (the “USPTO”).  The USPTO is the U.S. Government office which is responsible for issuing federal trademarks.

To get a trademark you must submit a trademark application for your business name, logo or slogan to the USPTO.  However, to get a trademark you will first want to conduct a trademark search of the USPTO trademark database.  This is because if someone already has registered a trademark that is the same or similar to your proposed trademark, the USPTO may deny your trademark application.  In addition, you may want to do more than just a trademark search of the USPTO database.   A comprehensive trademark search would include a search of not only the USPTO database but also a trademark search of each state’s trademark database for trademarks registered in individual states and for common law trademarks (i.e. trademarks that have not been registered).   This is because even if you get a trademark registration from the USPTO, if another company has used your trademark prior to your trademark application filing date, this company would be able to prevent you from using your federal trademark in the geographic area in which they used the trademark prior to your trademark application filing date.

Therefore, the answer to “how to get a trademark” is best answered in two parts.  First, to get a trademark you should conduct a comprehensive trademark search to make sure that your trademark application will not be denied or that there is not another prior user of your trademark that would prevent your use of the trademark in a specific geographic location.  After the trademark search clears the trademark, you may then complete the second step to get a trademark, which is the filing of your trademark application.

For more information on how to get a trademark for your business click on the “Register Your Trademark” link below.

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