SELECTION AND PROTECTION OF TRADEMARKS
(Should You Do It Yourself, Hire An Attorney or What?)
As is the case with a lot of areas of law, but more so than in most, protecting a trademark or service mark is a lot like playing chess. In connection with clearing and registering a mark, there are numerous choices to make many of which are of high strategic importance beginning, with respect to applying to register the mark, as in chess, with the opening move.
If you are choosing a slogan or other mark and it would not be a problem to be required to stop using it in the future, you could run your own clearance and apply to register the mark yourself. You would need to be alert to all deadlines. If the mark is your brand name or is otherwise very important to you, you should hire an attorney who, among other things, understands the relationships between and among common law and registered marks, registrations in the USPTO, registrations in one or more states and/or one or more other countries, rights to internet domain names, the role of courts and the effect of international treaties) and devotes time and attention to each registration (not a mill) to clear and protect it.
I encourage all clients to run a preliminary trademark search themselves mostly relying on searching the database of USPTO.gov and google.com to see if there are any obvious problems. I then charge hourly for discussion or review of anything found.
If there are no obvious problems, I charge $500 to $1,000 for legal fees and pass on the $129 to $650 out of pocket artificial intelligence computer based search fee, for what we call a “full search.” The computer based search is much more effective than a human search because it will pick up similar words with different spellings and different words with similar meanings.
A computer based search will usually be more than 200 pages which I will summarize in 2 to 5 pages.
The legal fees are based on the likelihood of more versus less problematic “hits.” Common words like “Apple” are going to have more similar marks that I will need to spend time reviewing than made up words like “Google.”
There are a variety of search services which vary in price. I will discuss the choices with the client and give the client my recommendation.
I charge $900 to $1500 to prepare and file an initial application to register a mark in the United States Patent and Trademark Office. That does not include filing fees of $325 per class.
In about 6 to 12 months after the filing of the application it is likely that the examiner will require changes and may determine that the mark may not be registered for many reasons. Additionally, competitors and others may raise objections.
I charge hourly to respond to these types of requirements and assertions.
It is at this stage that I am often consulted about a filing that has been made by someone other than a traditional trademark lawyer. Most of the time less than optimal decisions have been made regarding the initial application which increases the amount of work needed and the likelihood of a less favorable outcome.
If requirements are successfully negotiated and objections overcome and the filing was for a mark already in use, the mark will usually issue without additional cost or expense. If the mark was filed before use, there will be additional costs and expense to file an example of use. Those costs and expenses will be from $300 per class to much more if extensions must be filed because use of all goods and services the applicant wishes to include have not begun within the amount of time ordinarily allowed.