The Federal Trademark Law (Lanham Act) and the state trademark law of the 50 states preclude use and registration of a mark which is confusingly similar in sound, meaning or appearance if one seeing or hearing the mark would be likely to be confused as to whether the concerns manufacturing and/or selling products (or providing services) are certified by the manufacturer or seller of another. Additionally, in determining confusing similarity, two marks are not to be viewed side by side, rather the second mark should be compared against one’s mental image or recollection of the first mark.
Rights to a mark are established by use. The first user gets the superior right. Ordinarily, that right extend for the geographical area where the mark is used and to an area of reasonable expansion of business. That right may be extended geographically over the entire United States by registering the mark with the United States Patent and Trademark Office or throughout the state by registering the mark pursuant to state trademark laws.
We usually recommend that an availability search be performed. First, a preliminary search is conducted utilizing our office computer which accesses databases that include pending federal applications and registered federal and state trademarks. If appropriate, the preliminary search may be expanded to a database that includes business names classified according to their Standard Industrial Classification (SIC) Code.
If the preliminary search does not reveal any confusingly similar marks for related goods or services, then a full search may be ordered from a firm which maintains databases for searching. The full search includes pending federal applications and registered federal trademarks, appearing in a variety of relevant trade publications and trade names appearing in trade directories, such as Dun & Bradstreet.
After studying the results of the full search, an opinion is rendered indicating marks that may be infringed and whether the proposed mark is available for registration. Sometimes, we point out certain marks or trade names that may be a problem, and recommend that you investigate such marks and report your findings to us.
If the mark is available for use, a federal and state application for registration of the mark can be filed. The federal registration application is preferably based upon actual use of the mark, but may be filed based upon a bona fide intent to use the mark. Usually, we recommend just applying for registration of the word mark only, since incorporating the words into a particular design (logo) limits the coverage that is eventually obtained. However, for added protection, if the design is of particular significance, we recommend that another application be filed on the word mark in combination with the design.
In order to file the federal registration based upon actual use, or a state application, you must provide us with specimens of the mark as utilized on the product (or service), such as labels, along with the dates on which such labels were first used in commerce.
After the application is filed, the Patent and Trademark Office takes the application up for examination. They search through the registered and pending marks on file in their Office. In about 50-60% of all applications filed, the Patent and Trademark Office renders an Office Action in which they voice formal and substantive objections to the application. We have a right to respond usually within six months. Similar examination procedures exist on the state level.
If no Office Action is rendered, or after we have overcome the marks cited and the objections raised by the Patent and Trademark Office, the application is published in the Official Gazette. If no member of the public files an opposition within thirty days after publication, the mark is then automatically registered three months after publication if the application was based upon actual use. However, if the application was based upon intent-to-use, then a Declaration of Use must be filed prior to registration. Hence, it takes about 12 to 18 months to obtain a federal registration.
The U.S. Registration is in effect for ten (10) years. It may then be renewed for additional ten (10) year periods provided the mark is used continuously. Between the fifth and sixth year after registration, affidavits must be filed attesting to continued use. If the affidavits are accepted, the registration becomes incontestable. Incontestability provides certain additional presumptions in favor of the owner of the mark.
Our usual hourly rate for all professional services is $175.00 for all time spent on your behalf. In addition, certain out-of-pocket expenses will be billed to you as they are incurred by us in rendering professional services to you.
The approximate legal fees and expenses are as follows:
- Initial conference (assuming 1 hour)…… $125.00 – $200.00
Computer time for preliminary search…… $50.00-$100.00
Computer charge for Full Search (50% surcharge, if expedited)…… $340.00
Evaluation and opinion on each Search…… $400.00
Preparation of federal application (per mark)…… $400.00
Preparation of state application (per mark)…… $300.00
Filing fee for each federal application…… $245.00
Filing fee for each state application…… $ 87.50
Responding to Office Action…… $200.00-$425.00
Preparing and filing Declaration of Use…… $300.00
Miscellaneous correspondence…… $350.00
The foregoing has outlined some of the more important aspects of establishing valid rights to trademarks and service marks and the procedures and costs in accomplishing the same.