I am looking to file for a trademark. However, I am not sure whether I should tackle the situation on my own or hire an attorney.
I am considering hiring an attorney, but I also would like to know an estimate of what typical trademark attorneys charge.
Your focus is wrong. You should not hire a trademark attorney simply for registration chores. You should be hiring an attorney who's a branding expert.
The advice from such an attorney goes far beyond filing a trademark registration application. That attorney will assist in developing, protecting, managing and enforcing the brand identity of your company AND for whatever it is you're selling. That includes, at least:
1. creating and registering a non-infringing company name and [perhaps] trade name,
2. creating a protectable product name,
3. creating a tagline to grab consumer attention,
4. creating a logo design,
5. creating a distinctive product design [that does not infringe any design patents or trade dress],
6. creating distinctive product packaging,
7. clearing the rights to all of the above,
8. ensuring that your company owns all the rights [including copyrights] in all of the above,
9. registering the copyrights in any copyright-protectable designs and packaging,
10. affixing the proper notice to each mark when used in commerce,
11. displaying the marks correctly in commerce,
12. properly altering the marks [if at all],
13. registering the resulting trademark rights with the state and federal trademark offices,
14. creating a domain name portfolio of names confusingly similar to your brand,
15. creating “Brand Identity Guidelines” to ensure a uniform marketplace presentation of your brand,
16. expanding your trademark rights by branding other, specific products,
17. monitoring the marketplace and domain space for infringers,
18. monitoring and responding to reviews on consumer product gripe sites,
19. assist in drafting lawful language for advertisements extolling the virtues of your product,
20. reviewing your competitor’s advertisements to evaluate if they’re harmful “false advertisements”,
21. enforcing your trademark rights against infringers,
22. working with your accountant to value the mark as a company asset,
23. etc.
Good branding sells even mediocre products. Bad branding won’t sell even good products. Invest in someone who knows the legal ins and outs of branding, protection and enforcement. Good luck.
Jeffrey E JacobsonTrademark Application AttorneyNew York, NY ·
You really need to consult with an attorney to file and prosecute for a federal trademark. There are some people that obtain the registration without a lawyer; but, that is rare and not the best way. The attorney needs to help you plan this and than work on filing it. The entire process shouldn't cost more than two thousand dollars, including everything.
The long and short is that you get guidance on the best way to register your mark, whether to file a mark, and a host of other details that simply don't come-up if you file it yourself or use a service. The additional cost of having an attorney is a form of insurance - while the attorney cannot guarantee a successful registration, they can definitely ease the process and in some cases save you money in the end by preventing you from filing flawed or unnecessary applications.
As for costs, you will find they range depending where you are at and what exactly they cover. For example, the government charges a fee to file the application, and this fee can dramatically increase the overall cost depending on how you file the application. In the end, I highly recommend picking up the phone a calling around.
William F Lang IVPatent Application AttorneyBeaver, PA ·
The advantages are twofold: 1) Making sure that your trademark does not infringe anyone else's mark before you adopt it, and 2) making sure that your mark is registered in the way that best protects you.
Some background on trademarks: Trademark rights are acquired by using the mark in a specific geographic area, for specific goods or services, to distinguish your goods or services from those of others. Trademark rights exist where the mark has become known for its connection with those goods or services. This is known as common law rights. Common law rights do not extend to other geographic areas or to other goods/services unless the mark becomes famous. Federal registration provides a presumption of the right to use the mark throughout the entire country, but is inferior to common law rights that existed prior to the date the application for federal registration was filed.
Before adopting a trademark, I always recommend a full trademark search and clearance opinion. The search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. If the results are favorable, then you can be reasonably assured that you will not receive a cease and desist letter after having spent thousands of dollars on signage, advertising, etc., making the search very worthwhile.
When analyzing the search results, the Supreme Court has set forth an 8 factor test for infringement, which here in the Third Circuit has been expanded to 10 factors. You can probably get 80% of the way to the right answer using common sense, but a 100% correct determination of likelihood of confusion requires an experienced attorney applying those factors to your mark and the marks found in the search. A little money spent an an attorney early saves you from spending a lot of money on an attorney later.
If the search results are favorable, then an application for federal registration should be promptly filed. This can be done based on a bona fide intention to use the mark, but actual use of the mark is required in order to complete the registration process. Depending on the nature of your mark, your attorney may make recommendations regarding the number and type of applications for registration. For example, if there is a name and design logo, it may be advantageous to file them both together and separately. There are other possibilities that your attorney can advise you on once your plans are known.
Lastly, the online filing forms appear quite simple, but the issues addressed therein have nuances that are not readily apparent. An attorney can make sure things are done right the first time.
The PTO does allow one to prosecute a trademark application without an Attorney. However the application process can becone complicated, for instance your mark may be rejected based on likelihood of confusion, etc and then you will have to construct a legal argument why the examining attorney is wrong. If you are not an attorney this could be very difficult.
As for price, I can only tell you what I charge.
I agree with most of what's been said here so far. I would add that it's possible that you could find the services you're looking for in the $1,000-1,500 range. But keep your expectations modest - a lot hinges on what you are trying to trademark, and who already has rights in the area you're trying to target.
You received a lot of good answers here. Think of your trademark as an investment such as buying a business. You would not of course just right a check to buy a business without asking some questions first and you would also not just take the sellers word for everything right? You would conduct some proper due diligence to ensure that you are not buying a problem. It is the same with whatever mark you choose to invest in and receiving actual legal advice along the way might be invaluable to you as trademark law is not as intuitive as many (mostly those selling you on quickie filings) would like you to believe.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
Best regards,
Frank
Natoli-Lapin, LLC
An attorney can advise you on what marks should be applied for, such as the Word, Logo, words and logo, colors, sounds and other aspects of the mark(s). A trademark attorney will also identify the correct goods and services to designate for filing your application(s) for registration. Lastly an attorney can advise you on responding to a refusal by the office to register the mark or an opposition by a third party to your registration. Typically an application and USPTO fees are under $1000 for preparation and filing of a trademark application. Typically trademark prosecution (the communications with the USPTO) are billed on an hourly basis. These costs can vary from firm to firm. However, you should consider the level of expertise of your trademark attorney and the quality of their advice.
Answered on this list many times. anyone can fill in the blanks on the electronic forms in the USPTO. You get a trademark registration so that if someone infringes your trademark you have the benefit of a registration in a lawsuit. Whatever you put in your application with the USPTO can and will be used against you in a lawsuit. Some things people put in their applications can really hurt you later if you are ever in a lawsuit. Just like in criminal cases, you don't talk without a lawyer, you should not "talk" in a public record of the USPTO either.
