How Much Will It Cost to Register My Trademark? – Part Three
Crystal Broughan, Intellectual Property Attorney Nov 16, 2017 in Intellectual Property
The most common question I hear from potential clients is, “How much will it cost to register my trademark?”
Since there are many variables that come into play when registering a trademark, there is no set answer. In previous posts, I covered several issues that need to be considered, including current use, the type of trademark, where you will do business, and where you want to file your trademark application.
In the final post of this series, I cover other factors you may have to consider, including handling a refusal from the USPTO, filing a Petition to Cancel another trademark registration, and filing a Notice of Opposition.
Other Factors to Consider
Once the trademark application has been filed, the State trademark office or the USPTO may refuse to register the trademark for many different reasons. A simple edit to the description of the mark or the goods and services may be requested.
If you receive a refusal from the USPTO (an “Office Action”), the examining attorney may refuse to register the mark for the following reasons:
- The mark is generic
- Merely descriptive of goods and services
- Likelihood of confusion with an identical or similar trademark
- Primarily geographically descriptive
- Deceptively misdescriptive of goods or services
- Geographically deceptively misdescriptive
- Primarily merely a surname
- Not used as a trademark
- Use of a name, symbol or device of organization prohibited by statute
The trademark owner then has to determine if they want to file a Response to the Office Action or abandon the application. The Response to Office Action takes more time and cost more depending upon the seriousness of the refusal and whether or not there is a chance of ultimately getting the examining attorney to change his/her mind.
If the trademark examining attorney does not accept the arguments that are presented in the Response, then the trademark owner has to decide if they want to appeal to the Trademark Trial and Appeal Board, which cost even more money.
Petition to Cancel
The trademark owner may need to file a Petition to Cancel another trademark registration if a prior registration is preventing the registration of your trademark. This is possible if your trademark has priority in commerce or if the other trademark registration has been abandoned.
Notice of Opposition
The trademark application may be accepted by the USPTO but, during the 30 day period of publication to the public, another entity may file a Notice of Opposition to the trademark application. The trademark owner then has to decide whether or not to fight the Notice of Opposition, abandon the trademark application or try to negotiate a settlement or coexistence agreement with the opposing party.
All of the factors discussed in the three parts of this blog series play into the overall cost of obtaining a trademark registration.
When you meet with your attorney make sure you have answers to the questions listed. Discuss with your attorney the best strategy for protecting your trademarks and a good budget for obtaining and maintaining the trademark registrations.Share