Trademark Questions

trademark registration questions





Q. Do I need to perform a trademark search before registering my trademark?
A. Every competent trademark attorney will tell you that it is important to perform a trademark search before registering your trademark in order to minimize the risk that your trademark will infringe someone else’s. However, if you have performed your own search or are confident it will not infringe anyone else’s trademark, Forward Mark’s standard $99 (plus government fee) trademark registration filing package might be perfect.

Q. Do I have to register my trademark with the USPTO to use it?
A. No. Federal registration with the USPTO is not required to establish rights in a trademark. Common law rights (i.e., rights from trademarks not registered with the USPTO) arise from using of a trademark and may allow the common law user to successfully challenge a federal registration or application.

Q. If I don’t have to register my trademark to use it, why should I register my trademark?
A. Federal registration gives you several advantages that you do not get otherwise, including:
• A legal presumption of your ownership of the trademark and your exclusive right to use the trademark nationwide on or in connection with the goods/services listed in the registration;
• Public notice of your claim of ownership of the trademark;
• The ability to bring an action concerning the trademark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®; and
• Listing in the U.S. Patent and Trademark Office’s online databases to help prevent confusingly similar trademarks from being registered.

Q. How much does it cost to register a trademark?
A. The U.S. Patent and Trademark Office generally charges a registration fee of $225 to $375 per trademark per class depending on the type of application and description of your product or service. Forward Mark is able to file all applications for $275 or less (and if less, the remaining amount is kept by Forward Mark as a processing fee). Forward Mark’s fee is $99 or $399 depending on the trademark registration package you choose. In short, you total cost to file the trademark registration application will be $374 ($275 + $99) for the standard package or $674 ($275 + $399) for the premium package.

Q. How is Forward Mark different than other trademark registration services?
A. Most importantly, Forward Mark is an actual law firm practicing trademark registration and general trademark law. Because of this, we can give you our professional legal opinion regarding whether your trademark is registrable before attempting to register it.

Q. Why is it better to get a Trademark Opinion Letter?
A. The U.S. Patent and Trademark Office registration fees are nonrefundable even if they do not register your trademark. Our Trademark Opinion Letter is customized to your specific trademark and will tell you whether we believe your trademark is registrable, or whether we believe you would be throwing away you registration fee by attempting to register it.

Q. How do I know if my trademark is registrable?
A. The U.S. Patent and Trademark Office may prevent you from registering your trademark if another registered trademark exists that is confusingly similar to your mark, or if a registered or non-registered trademark owner opposes the registration of your trademark, or if your trademark is generic or merely descriptive of your goods or services.

Q. How long will it take for the USPTO to register my trademark?
A. The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of your application. But your federal trademark rights will date back to the date your application was filed, regardless of how long the U.S. Patent and Trademark Office takes to register your trademark.

Q. What is an intent-to-use (ITU) application?
A. The USPTO will only register trademarks that are currently being used in commerce. However, if you are not yet using your trademark in commerce, you may file an intent-to-use (ITU) application, which will reserve your trademark for a period of time. How long your trademark is reserved depends on how long it takes the USPTO to review the application. The USPTO will send a Notice of Allowance 3-6 months after the ITU application is filed, and you will have 6 months after receiving the Notice of Allowance to file a Statement of Use or an extension. The Statement of Use tells the USPTO that you are now using your trademark, at which point the USPTO will complete the registration process. If you are still not using your trademark in commerce by the Statement of Use deadline, you may request an extension. The government charges the same fee for an ITU application as it does a normal application. It also charges a $100 fee for filing a Statement of Use, and a $150 fee for filing an extension. If you are not quite ready to use your trademark but want to reserve it so no one else does, let us know and we can help.

Q. What else does Forward Mark Law Firm do?
A. In addition to filing trademark registration applications, Forward Mark Law Firm practices general trademark and business law, including domain name disputes.
Do you have other questions regarding our services or the trademark registration process? Contact us and let us know.