Most people do not understand the trademark registration process nor the trademark cost to register a mark. And while a lot of attention is given to the cost of litigation and the cost to rebrand, the trademark cost to register a mark should not be overlooked.
The first decision a trademark owner must make to begin the trademark registration process is to decide whether to file on a use basis or on an intent-to-use basis. Sometimes the decision will be made for you because you are filing a trademark application before you have a product or service to sell. Filing on a use basis as opposed to an intent-to-use basis could end up saving the trademark owner in the long run.
There are three options when filing a trademark application. A TEAS Plus application costs $225 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and requires the trademark application to select a goods or services description from the Manual of Acceptable Identifications. A TEAS RF application costs $275 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and allows the trademark applicant to submit a custom goods or services description. A TEAS Regular application costs $400 per International Class of Goods or Services and can be filed on paper, but this option will soon be phased out. The costs identified in this paragraph do not include attorney’s fees, which can be the total cost to file a trademark application to $500-$1,000 per International Class of Goods or Services.
After the trademark application is filed, it will be assigned to an examining attorney within 3 months. Once assigned, the Examining Attorney will examine the application for any registrability issues. Most trademark applications receive some form of refusal from the Trademark Office. If a refusal issues, the trademark applicant has 6 months to respond to the refusal.
A formal refusal represents minor issues such as: a disclaimer requirement, clarification to the description of goods or services, clarification to a description of the mark, etc. The cost to address a formal refusal is about $200-$400. A substantive refusal represents a significant issue with the application. The substantive refusals are those found in Section 2 of the Trademark Act with the most prevalent substantive refusal being likelihood of confusion. The cost to overcome a likelihood of confusion refusal can be in the thousands of dollars because it may take multiple rounds of responses and even an appeal to overcome the refusal.
Assuming no registration refusal issues or a registration refusal is overcome, the trademark application will be published for opposition in the Official Gazette. The publication date starts a 30-day period where another party can object to the registration of your proposed mark. And if an opposition proceeding does commence because a mark is too close to someone else’s, then you are looking at litigation type costs to defend yourself.
If no opposition proceeding is filed, then if you filed the application on a use basis, then the certificate of registration will issue. On the other hand, if you filed on an intent-to-use basis, then the notice of allowance will issue. Before the certificate of registration issues, you will need to file a Statement of Use. the cost to file a Statement of Use is $100. If you are not ready to file the Statement of Use within in 6 months after it issues, then you can file a request for an extension of time up to 5 times following the Notice of Allowance date. However, each extension of time will cost you $150. None of these costs include attorney’s fees.
The trademark cost while not on par with litigation cost is nevertheless money that can be saved by conducting a trademark search first. Probably more important is the time lost due to the trademark registration process. Once you file the trademark application, it will be at least 5 months before a certificate of registration issues.