One of the most common questions that a trademark attorney is asked, is: how much will it cost to protect a trademark? This is no simple question because there are lots of options that may make the process more or less expensive. It is also true that lawyers very much dislike the idea of estimating costs (and especially so in easy to find mediums like websites) because they believe that potential clients will interpret such estimates as guaranteed maximums. Nevertheless, there certainly are some reasonably accurate ballpark figures that can be used to illustrate the approximate costs of protecting a trademark in many common circumstances. Part in parcel of understanding the costs of protecting a trademark is understanding what steps are involved with registering a trademark. Once again, the procedures and options available to a potential trademark application make a short and easy explanation impossible. Nevertheless, in this post I’ll attempt to walk through, at a high level, what you should expect if you’re seeking your first trademark registration.
A trademark search is a critical part of protecting your trademark rights. By searching various databases of trademarks, you’ll know in advance whether someone else has already tried to register your mark (or a mark that’s similar enough to be a problem for you). If you know these things in advance, you can save yourself a ton of heartache and expense. Rarely a month goes by when I’m not contacted by a business owner who has made the very depressing and disruptive discovery that a trademark they’ve been using for months or years has a senior user in another state or jurisdiction. Legal fights of any kind are never cheap or easy and avoiding them by doing your due diligence up front is always worth the cost.
There are several different levels of trademark searching that can be done. The more thorough your search, the better. A very common way to do searching is by using a professional search firm that will assign a search expert to your mark, formulate a complicated series of queries on multiple different databases (e.g., federal trademarks, state trademarks, common law trademarks, domain names, industry news databases, etc.), and then organize the search results according to how similar they are to your desired mark. Searches of this type generally start around $600 for the search alone. You should also assume that an attorney will need to carefully review the results and then offer you advice on what they mean in terms of the risks you’d be assuming by moving forward with use and registration of your trademark. All told, a thorough search of this sort is likely to cost between $1,000 and $2,000 depending on the mark and the number of different products/services that you want to use the mark with.
There are also less thorough and, correspondingly, less expensive search options. In particular, there are private, commercial trademark databases that include both federal and state trademarks and that can be searched for a fee of around $150. You would typically want your attorney to do the searching of this type because they are familiar with the way the database query structures work and the way you’d want them to be constructed in order to get the best results. Generally, the total cost of searching in this manner is around $500 – $700.
The Trademark Application
Filing an application for federal registration of a trademark is a relatively straight forward process—if you know what you’re doing. Many a trademark applicant has fallen prey to the many different options available when filing a trademark application: Do you want to make a standard character claim or use a special form drawing? What international classes of goods and services do your goods and services fall under? Should you apply in your own name or some other entity? Should you file an Intent-to-Use or Actual Use application and what are the benefits of each? These are only a few of the many questions you must be prepared to answer when you file a trademark application. If you make an error, your application will receive a refusal called an Office Action from the US Patent and Trademark Office and you’ll likely need to hire an attorney at that point to correct any errors made in the initial application.
The long story short is that a seasoned trademark attorney knows how to answer all of the questions you’ll be confronted with when filing a trademark application. Given the right expertise, all the requisite information can be gathered, compiled, and then drafted into an application in relatively little time. There is a very good reason that trademark attorneys exist and it’s the same reason that auto mechanics exist—you can pay a trained mechanic to fix your car in an hour or two, or you can try and study manuals for hours and hours and then try your hand and hope for the best (and then pay a mechanic even more to fix the damage you’ve done). Prudent business owners will always trust their valuable business assets to a professional.
So, what’s the bottom line? To file a single class (i.e., covering one “type” of good or service) in the United States, you should expect to pay somewhere between $1,000 and $2,000, inclusive of the official government fee and the requisite time of an attorney to prepare and file the application. Many law firms, including mine, offer a fixed fee arrangement that will cover all the necessary work to file the application for a set cost. This type of arrangement can help you to budget your expenses, but may not always be the best choice in every circumstance. You should definitely discuss your particular situation with an expert attorney to see what the best arrangement would be for you.
Prosecuting the Application
Filing a trademark application is an important step, but ultimately not the only one required to register a trademark. Once a trademark application has been filed with the US Patent and Trademark Office, it will be reviewed by an Examining Attorney. Most of the time, the Examining Attorney will object to some portion or another of the application. Examples of issues that might be raised are potential conflicts with previously registered trademarks, allegations that a trademark is merely descriptive (i.e., it doesn’t function as a trademark because it’s just a description of the goods or services with which it is used), claims that the description of goods or services is too broad, and any number of hundreds of other objections. Responding to these objections can be very complicated and an understanding of the relevant trademark law is often necessary. Suffice it to say, an attorney should almost always be employed to respond to an Office Action.
Beyond Office Actions, there may be other procedural hurdles to achieving registration of your mark. For example, if you filed on an Intent-to-Use basis, you would then need to prove that you’ve begun using your trademark. Once the Examining Attorney has completed reviewing your application, it is approved for a publication period. During that period, third parties may oppose the registration of your mark by filing a Notice of Opposition. When this happens, you need to negotiate with the opposing party and either work out a settlement or proceed with the opposition process, which works much like, and can cost as much as, a federal litigation.
As you can see, there are many things that might go awry during prosecution of a trademark application. It could also be the case that the application sails through the process with flying colors and little to no intervention is needed from an attorney. Usually, however, at least some issues are raised during the process and some back-and-forth between your attorney and the US Patent and Trademark Office is necessary. Because of the large amount of variance possible, it’s very hard to estimate costs of prosecuting a trademark. A good ballpark, however, for an average U.S. trademark application, assuming no significant difficulties, is around $1,000 to $3,000 for the prosecution of the application (this is on top of the above-referenced costs to search for and file the trademark application).
For those who’ve never had a trademark registered before, the foregoing should give you a fairly good sense of the costs involved. As with any legal matter, lots of things can happen to make costs greater or smaller than the “average.” Finding an attorney whose expertise you are comfortable with and who is a good communicator will go a long way in helping you achieve sanity in your legal budgeting.
The cost of a single US trademark registration is only one small piece of the puzzle when considering how to protect the intellectual property of a growing business. Trademark portfolio development, foreign protection, copyright, and patent protection are a handful of some of the other considerations you will face as a successful entrepreneur. Nevertheless, a first trademark application is always a good starting point and the more information you have on the process, the better off you will be.