The Trademark Registration Process

The trademark registration process can be divided into three stages: Trademark Clearance (which is optional), Application for Registration (based on Actual Use or Intent To Use), and Trademark Registration Maintenance (§8, §9, and §15 affidavits).

There are legal and governmental fees associated with various stages of the trademark clearance, application, and registration maintenance process. You can view my trademark legal fee schedule and the USPTO trademark fee schedule. Presently, trademark application legal and governmental fees total $700 per class (see below for an explanation of classes), and Statements Of Use legal and governmental fees total $450 per class (see below for an explanation of Statement Of Use).

Trademark Clearance

Before adopting a mark, it is best to conduct a search to ensure that the mark is available to use. Because trademark rights are established through use and not through registration, the clearance step requires more than simply searching the Trademark Office database. For details on the various searches available and their associated costs, see Trademark Searches.

Trademark Registration

THE APPLICATION

Trademark registration begins with filing a trademark application. Applications may be filed based on actual use of the mark, or on an intent to use the mark (or based on foreign trademark filings).  See here for a full explanation of filing bases.

Application filing fees are based on the number of classes covered by the application. For example, restaurant services are in one class (class 041), while packaged food products are in one or more other classes (such as class 029 for dairy, 032 for beverages, etc.). See here for a full explanation of trademark classes.

INTENT TO USE APPLICATIONS AND STATEMENTS OF USE

For applications filed on an intent to use basis, applicants are required to begin use of the mark and to file a Statement Of Use (with associated fees) before the Trademark Office will issue a registration. Applicants have six months from the date an application is allowed, which is usually about a year after filing, to file a Statement Of Use. Applicants can extend that deadline for up to five additional six month periods for a total of three years from the notice of allowance by paying periodic extension fees.  More details on Intent To Use applications can be found here.

OFFICE ACTIONS

In many instances, the only fees associated with applications are filing fees and intent to use fees (if the application is filed on an Intent To Use basis). However, in some instances, trademark examiners may issue office actions which raise issues that must be addressed by Applicants. These range from clerical issues like description of graphic marks or description of goods, to substantive issues like refusal based on existing registrations. See here for an explanation of legal fees associated with responding to office actions.

OPPOSITION PERIOD

Once a trademark examiner approves an application, it proceeds to the second step of the process, publication for opposition. During this 30 day period, any member of the public is permitted to oppose any application which he or she believes will damage his or her interests (usually because that person believes the applied-for mark conflicts with his or her own mark). Opposition is a form of arbitration that occurs in the Trademark Office. It can be lengthy and costly, but the vast majority of applications do not enter opposition. Details on opposition can be found here.

ALLOWANCE/ISSUANCE

Once the opposition period ends, assuming no opposition has been filed, applications either issue as registrations (in the case of Actual Use applications) or are allowed (in the case of Intent To Use applications). There are no separate registration fees.

Registration Maintenance

After a registration is issued, a trademark owner must periodically file renewals (maintenance filings). These include Section 8 and 15 filings at the fifth anniversary of the registration, and Section 8 and 9 filings every ten years from the registration date. Fees for these filings are per class. See here for details on maintenance filings.