Flat Fee Trademark Registration

What's Included in the Package

Trademark Counseling and Strategy Session with an Attorney

an attorney will review the proposed trademark and discuss how the registration process works. Additionally, there will be a preliminary review of the trademark and the potential issues that may affect its registration with the USPTO.

Trademark Knockout Search with the USPTO's Database

an attorney will conduct a knockout search of USPTO's database for trademarks that may be similar or identical to the proposed trademark. It should be noted that this is not a full US trademark search report, but one can be ordered depending on the client's needs.

Attorney Prepared Trademark Application & Filing

an attorney will prepare and review a trademark application for a mark that is in being used in commerce and in one International Class. Marks with an intent to use in commerce or in more than one International Class will require an additional fee.

Responses to Non-Substantive Office Actions

We will respond to non-substantive Office Actions, such as corrections or revisions to the applications. These requests do not require legal analysis and writing. But Office Actions which raise legal rejections or refusals will require an additional fee to respond to.

One Year of Trademark Watch Services

Once your trademark has been registered, we will supply you with a one-year watch service of the (USPTO) database. This watch service will alert you if there is ever an application filed that is similar or identical to your registered trademark, allowing you to take swift action if necessary.

Guide to Using and Maintaining Your Trademark

When your trademark is registered, you will be provided with an easy-to-use guide that includes on the proper uses of your mark and the legal requirements to protect your mark. We will also provide you with renewal dates of your mark in order to keep your trademark live with the USPTO.

FAQs

What is excluded with the flat fee package?

The following terms outline what is not included in the flat fee trademark application package:

Government filing fees, which is about $250 to $350 for a trademark in one class. Please let us know if you would like your mark to be registered in more than one class so we can give you a quote.
Trademarks that consist of logos, special characters or drawings.
The flat fee application only covers marks that are in actual use as of the filing date. Intent-to-use application will be higher.
Comprehensive Federal and State trademark search performed by a professional company. Our flat fee package only includes a preliminary knockout search of your trademark conducted on the USPTO’s database – however these searches are limited in scope and do not rule out the possibility of common law trademarks which may cause an issue later on.
Substantive legal responses to Office Actions which involve legal research and drafting. These types of Office Actions arise in situations where your proposed trademark may be confusingly similar to an existing mark.
Oppositions, Appeals or other legal proceedings are excluded.
Legal opinion letters

Are there any additional fees and costs?

The answer depends on the client’s needs and objectives. The flat fee trademark package includes:

registration of a trademark that is currently in use;
the trademark application is filed in one International Class;
the trademark has no special characters, logos or drawings;
the trademark search is limited to a knockout search of the USPTO database and a full Federal and State search is not requested;
there are no Office Actions which require substantive legal responses, non-substantive Office Actions are filed at no charge;
no oppositions are filed.

The flat fee trademark package is ideal for new businesses that have a simple word trademark and are just starting out. This would be a great option for Amazon private label sellers that would like to get onto Amazon’s Brand Registry. This option would give you protection against other seller and and you could start building your brand on Amazon. According to the latest information from Amazon, a brand may be eligible for Brand Registry once it has a pending trademark application with the USPTO.

However, the following situations will incur additional charges beyond the flat fee package:

if the proposed trademark is actually not being used in commerce at the time of filing the application, in which case an “intent-to-use” application would have to be filed;
if the trademark is to be filed in more than one International Class;
if the trademark consist of special character or designs;
if a full State and Federal trademark search is requested;
if there is an Office Action which requires us to conduct substantive legal research and write a brief. Non-substantive responses are provided free of charge. Non-substantive responses are those responses which do not require legal research and analysis, such as making a correction to the application. However, sometimes the USPTO will send Office Actions which require legal research and analysis which would require us to spend significant time researching and preparing a response.
there are oppositions or other proceedings before the USPTO.

My goal is to provide our clients with the most up-to-date assessment of their case. I will always inform of potential costs and give you an option to refuse the service before we move forward. However, please note that it is not always possible to predict what costs may arise until we file the application and start to prosecute it.

What is a Standard Character Mark?

A standard character mark is the use of text-only characters to describe a proposed trademark. It disregards any special characters, styles, fonts, logos or drawings and focuses simply on the words. Standard character trademarks usually consist of letters, numbers, or just words. Standard character trademarks usually provides the broadest protection to the owner, thus allowing you to use your trademark in any style or design you like. This is often the best choice for many small or new businesses starting out. However, if your trademark consist of special designs, logos, colors or styles we always recommend filing a stylized trademark application to gain even additional protection. Of course, these types of trademarks will cost more to file and do not qualify for our flat rate pricing. For more information about standard character v.s. stylized marks please contact me.

What is the difference between a “use in commerce basis” application and an “intent-to-use” application?

A trademark application filed based on an “use in commerce” basis simply means that the trademark is actually being used to sell goods or service in interstate commerce or with foreign countries. For example, if the applicant is selling its products under a specific brand, then it is shipping those products to its customers in other states or countries, then this is considered “use in commerce”. But if an applicant’s goods or services are strictly limited to a geographical within a state with no out of state or country sales, then the trademark may not be considered as being used in commerce.

However, under an “intent-to-use” basis, the business has not actually started using the trademark in its business, but rather it intends to start using it in the near future. The intent to use the mark must still be in commerce and not wholly restricted to within the state.

Our flat fee trademark package covers applications which are actually being used in commerce. We can always file an intent-to-use application, though the cost will be higher since there are additional forms which need to be filed once actual use occurs.

What is a USPTO preliminary knockout search?

This is a basic search of the USPTO database for the proposed trademark. The search is limited in scope because it is conducted only on the USPTO’s database and does not cover common law searches or state databases. While a knockout search may cover phonetic and minor spelling variations, it is not a comprehensive trademark search and will not cover all possible similar marks.

Do I need to do a full trademark search before filing a trademark?

The answer depends on the proposed trademark, its usage, and the applicant’s objectives. It is highly recommended that all applicants conduct a comprehensive search. A comprehensive search is not included in our flat fee package, which normally costs about $800. There are other cheaper search options available and we usually discuss them with all applicants along with their advantages and disadvantages. Ultimately, it is the applicant’s decision as to which type of search to conduct prior to filing its application with the USPTO.

How long does it take to file my trademark?

It normally takes about 2 to 3 weeks to prepare and file a trademark application.

Please note that filing a trademark is different than a registration. Filing is merely us filing your trademark application. Once filed, the trademark office can take anywhere between 6 to 9 months to review your application. Once reviewed, they will either reject it, issue an office action requesting additional information or action from you, or clear the mark for registration.

How long does it take for the USPTO to register my trademark?

Once an application is filed, it takes about 3 to 6 months for it to be assigned to an examiner at the USPTO. Then the examination process starts and this can take an additional 3 to 6 months. If there are no substantive legal issues with the application or the proposed trademark, then the mark will proceed to registration and a certificate is issued about 1 to 3 months after the examination is concluded.

However, if there are substantive legal issues during the examination process, then the process can take much longer. For example, the trademark office could issue an office action requesting an amendment to the application or a clarification. Some office actions will require legal review and analysis by an attorney. It is worthy to note that a good number of applications never even make it out of the examination process and are abandoned.

What is an Office Action and will I get one?

An Office Action is a letter sent by the trademark examiner notifying the applicant of legal issues with the application. Sometimes the Office Action is very minor and simply requests a correction or a clarification. These are considered non-substantive Office Actions because they does not require an attorney to prepare a legal argument. We respond to non-substantive Office Actions at no charge.

However, when the examiner raises a legal issue, for instance by citing a confusingly similar mark, then we must prepare a legal argument. This involves legal research and analysis. Substantive Office Actions are not included in the flat fee package and may cost anywhere between $700 to $1500. We usually charge an hourly rate for responding to such actions, however we always communicate those costs to the client and obtain an approval before proceeding.

Some clients may choose to abandon their trademark and not respond to a substantive Office Action, instead choosing to file a new trademark. Others take a different approach and want to engage with the USPTO until a registration is issued.

How is an Office Action handled under the flat fee package?

Non-substantive Office Actions usually request a correction or clarification to the application. They do not involve legal issues and are simply limited to the four corners of the application, i.e., correcting a name or address. There is no legal research and analysis which needs to be performed. We respond to these non-substantive Office Actions at no charge as part of our flat fee package.

Substantive Office Actions raise legal issues, some of which may be determinative to the application. For example, the examiner may find that the proposed trademark is descriptive and not subject to registration. Or the proposed mark is confusingly similar to an existing trademark. These substantive Office Actions require legal research, analysis and drafting of a formal response. Normally an hourly rate applies to these types of responses and they could range between $700 to $1500. Responding to substantive Office Actions is not included in our flat fee trademark package. However, we will always let you know of the costs and expenses of responding to an Office Action prior to responding to them. The decision is ultimately up to the client.

What is an International Classes?

There are 45 International Classes. The products associated with a proposed trademark will normally fall within one of these International Classes. Our flat fee package covers filing a proposed trademark application in one International Class. If an applicant wishes to file in additional International Classes, there is an additional charge. Please ask us for additional details regarding filing in more than one class.

The current list of classes per the USPTO, are as follows: 001 Chemicals 002 Paints 003 Cosmetics and cleaning preparations 004 Lubricants and fuels 005 Pharmaceuticals 006 Metal goods 007 Machinery 008 Hand tools 009 Electrical and scientific apparatus 010 Medical apparatus 011 Environmental control apparatus 012 Vehicles 013 Firearms 014 Jewelry 015 Musical instruments 016 Paper goods and printed matter 017 Rubber goods 018 Leather goods 019 Non-metallic building materials 020 Furniture and articles not otherwise classified 021 Housewares and glass 022 Cordage and fibers 023 Yarns and threads 024 Fabrics 025 Clothing 026 Fancy goods 027 Floor coverings 028 Toys and sporting goods 029 Meats and processed foods 030 Staple foods 031 Natural agricultural products 032 Light beverages 033 Wines and spirits 034 Smokers’ articles 035 Advertising and business 036 Insurance and financial 037 Building construction and repair 038 Telecommunication 039 Transportation and storage 040 Treatment of materials 041 Education and entertainment 042 Computer and scientific 043 Hotels and restaurants 044 Medical, beauty and agricultural 045 Personal and legal

How many international classes should I file in?

The flat fee package includes one International Class. Filing in additional classes really depends on the applicant and in how many classes they wish to protect their mark in. If you are unsure about the number of classes your trademark should be filed in, please consult with the attorney at the initial meeting. An attorney would be able to review your products or services, as well as the proposed trademark, and give you a recommendation as to the number of International Classes which the mark should be filed in.

Can I enroll in Amazon’s Brand Registry as soon as I file my Trademark?

According to the latest information from Amazon, “Brands must have a pending or registered and active text- or image-based trademark” to be eligible for the Brand Registry. However, from our experience a pending trademark is not a guarantee that your brand will be enrolled in the Brand Registry.

Do you guarantee that my trademark will be registered?

No. We cannot guarantee that your trademark will be accepted and registered with the trademark office. There are many factors that play into registering a mark and it is simply impossible to predict or guess as to whether a mark will be registered.