What is the difference between SM, TM and ® ?
A: SM is a service mark, designating services rather than tangible goods. TM is a trademark and is more appropriate for a product sold without services. Both SM and TM reflect state (province) trademark use or unregistered use. The ® symbol is reserved solely for federally registered trademarks.
What if I use TM without registration ?
A: Trademark rights accrue from use, not registration. However, another party could possibly be granted registration of your trademark in the U.S. if our Trademark Office was unaware of your prior use. You would then be forced to either file an opposition or cancellation proceeding with the U.S. Trademark Office or file for trademark infringement in federal court. You would bear the burden of proving prior use. Registering the mark before another claims it is much less expensive.
What is the approximate time from filing to registration of a U.S. Trademark ?
A: Registration of a federal trademark, to include a publication period, is estimated at 12-14 months based on prior experience.
How long does it take to get a trademark search and opinion ?
A: The cost of a federal trademark search & opinion is US$350.00 for up to 3 classes. Each additional class incurs an additional US$50.00 search fee. Our search includes an abbreviated common law search to uncover open, unregistered use of a trademark that would prevent your own registration.
A state of Florida trademark search is US$300. We consider it necessary to include a common law search as part of any reasonable trademark search as the value of the common law search has proven itself to us and our clients many times over. The search and opinion are prepared by a registered attorney.
What is the cost of a trademark search and opinion ?
A: A search and opinion is generally completed within 2 business days of authorization and payment. A search on more than 3 classes may require an additional day so that the opinion may properly review issues in all additional classes.
When is a trademark search and opinion recommended ?
A: A prior search is recommended if the trademark is to be used in U.S. commerce immediately or in the near future, pending registration, since finding out many months later that you cannot protect a trademark can have severe financial consequences on your product marketing and promotion as well as manufacturing efforts.
What is the cost to file a U.S. Trademark Application ?
A: The professional fee for preparation and filing is US$325. There is no extra charge for up to 3 classes. Filings In excess of 3 classes are charged at US$25.00 per class. The U.S. Trademark Office filing fee is presently US$335.00 per class. Accordingly, the cost to file a single mark in a single class is US$660.
How quickly can you file a trademark application?
A: We electronically file all trademark applications. In many instances, an application may be filed on the same day we receive the required information and payment.
What information do you need from me to file a U.S. Trademark Application ?
A: In all instances, we do NOT need a power of attorney signed by the applicant to file a U.S. Trademark Application. We are registered with the U.S. Patent & Trademark Office, which will accept a registered attorney’s signature as proof of authority to file for the applicant.
- Trademark is NOT currently being used in the U.S.
- Name and address of Trademark Owner.
- If a corporation or other non-personal entity, the type of entity and country of incorporation.
- Identification of trademark as word mark or stylized (design) mark.
- International Class and description of goods and services offered in connection with trademark.
- Trademark is currently being used in the U.S.
- Name and address of Trademark Owner.
- If a corporation or other non-personal entity, the type of entity and country of incorporation.
- Identification of trademark as word mark or stylized (design) mark.
- First date of use anywhere
- First date of use in U.S.
- International Class and description of goods and services offered in connection with trademark.
- A digital sample of the trademark in use, such as on a product label or in advertising, preferably in .jpg format. A facsimile of the trademark is acceptable.
- Trademark is currently registered in a foreign country or subject to a PENDING foreign application.
SEE THE FOLLOWING QUESTIONS
What foreign priority claims are available for a U.S. Trademark Application ?
A: The U.S. is a signatory to the (1) WTO TRIPS, (2) Inter-American Convention (Pan American Convention), (3) Buenos Aires Convention, and (4) PARIS Conventions. Additionally, a foreign applicant may claim priority arising out of a European CTM, and their exists a Memorandum of Understanding between the U.S. and Taiwan. Foreign priority will also be afforded where the foreign jurisdiction provides reciprocal rights of trademark priority to U.S. citizens. Finally, the U.S. has ratified the Madrid Protocol which shall become effective in the U.S. in November, 2003.
What if I have a trademark registration in my own country ?
A: Priority may be afforded a U.S. application if based on a valid existing registration in the applicant's country of origin.
What do I need to claim priority based on an EXISTING trademark registration in my own country ?
A:
(1) A true copy, a photocopy, a certification or a certified copy of the applicant's trademark registration in the country of origin;
(2) A translation of the registration if not in English, signed by the translator. It need not be certified;
(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce;
(4) The scope of the goods covered by the U.S. application cannot exceed the scope of the goods or services in the foreign registration;
(5) If the applicant is not domiciled in the United States, the applicant must designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark.
What is an acceptable certification or certified copy ?
A: U.S. law requires that the applicant submit ‘‘a true copy, a photocopy, a certification, or a certified copy" of the registration in the applicant's country of origin. Certifications are obtained from the issuing trademark agency in the applicant's country of origin.
What if I have a PENDING trademark registration in my own country ?
(Not valid for applications filed under the Buenos Aires Convention)
A:
(1) The U.S. application must be filed within 6 months of your home country filing;
(2) Provide the, serial number, filing date and country of your home country application;
(3) The applicant must verify that the applicant has a bona fide intention to use the
mark in commerce as of the filing date of the application;
(4) The scope of the goods covered by the US application cannot exceed the scope of the
goods or services in the foreign application;
(5) If the applicant is not domiciled in the United States, the applicant must designate a domestic
representative, i.e., a person residing in the United States on whom may be served notices or
process in proceedings affecting the mark.
What else do I need to know about filing in the U.S. ?
A: A single application can be based on both foreign priority and either actual use in the U.S. or an intent-to-use in the U.S. At the appropriate times, conditions for each basis will need to be met. In this way, you can claim both a U.S. basis and a foreign priority basis and, if you cannot provide the foreign information, that basis can be dropped and the application will proceed under the U.S. filing basis.
Similarly, you can file a single application based on both actual use and an intent-to-use. This may be helpful if you are currently using the mark for particular goods but intend to expand into other product lines with the mark in the future.
Please always advise our office of any foreign registrations or pending foreign applications.
What other costs are involved in obtaining a U.S. Trademark Registration?
A: The U.S. Trademark Examiner may object to a proposed mark as descriptive or confusingly similar to other marks in use. The Examiner may similarly request clarifications, substitute specimens of trademark use or amendments to the application. The cost of responding to US Trademark Office actions cannot be anticipated as it depends on a number of factors unique to each matter. We charge an hourly fee of US$250.00 per hour, which is believed to compare quite reasonably with our competition in the U.S. When an office response is received, we will forward it to your attention for discussion and instructions on further proceedings at which point a fee estimate may be provided.
What is the cost of registration when the application is approved?
A: After the trademark is approved by the Trademark Examiner and published to allow oppositions, it will be in condition for registration. There is no additional cost of registration of a mark based on actual use in commerce. Renewal fees will be required in the future however. For marks filed with the intent-to-use the mark in the future, a statement of use will need to be filed once the mark is in actual use. The U.S. Trademark Office charges US$100.00 for a filing fee and our professional fee for preparation and filing of the document is also US$100.00.
Foreign marks which are granted a priority based on actual registration in a treaty country do not need to show actual use for registration to proceed and so may avoid the intent-to-use designation and related fees.
What is the cost of defending an opposition to our proposed trademark ?
A: Opposition costs cannot be predicted with accuracy as the strength of the opposition position varies from matter to matter. We charge an hourly fee, as in trial matters, of US$250.00 per hour, which is believed to compare quite reasonably with our competition in the U.S. In the event an opposition is received, we request US$1000.00 as a retainer to evaluate the opposition and discuss the merits of proceeding. In the event your client chooses not to proceed with the opposition, any unearned funds are immediately refunded.
What about a state (province) trademark registration ?
A: We recommend a Federal trademark registration instead of a Florida trademark registration, if possible, for the following reasons:
(1) A state trademark only protects the mark within the state's territory. Use outside of Florida would not be protected. In an age when marketing may be undertaken over the Internet, a state trademark is at a disadvantage
(2) Similarly, the domain name dispute services will often recognize trademark rights in a federal registration but do not recognize state registrations (presumably because they are so limited in geographic scope)
(3) A state trademark registration MUST be based on actual use in Florida commerce
(4) No foreign priority is provided for a state registration
(5) No electronic filing. The proper forms must be delivered to the state authorities
(6) A notarized signature to the registration forms is required of the applicant; and
(7) The cost difference is minimal when considering the possibility of national or international marketing
If you are certain a state trademark registration will meet your needs, the professional fee for preparation and filing is US$325. The Florida Trademark Office filing fee is presently US$87.50 per class. Accordingly, the cost to file a single mark in a single class is US$412.50.
How do I pay for your services ?
A: We prefer payment by wire transfer however payment by check is also possible. Our bank charges US$40 to process checks drawn on non-U.S. banks and these charges are added to the total debit for services. In the case of wire transfer, we absorb our bank’s charges as a courtesy to our clients and associates. Electronic debit notes are issued and wire transfer instructions are provided at that time. All funds to be paid in U.S. Dollars.
|
