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Decoding the Trademark Application Legal Fee

Posted by Giselle Ayala | Jan 30, 2021 | 0 Comments

When it comes to the registration of a trademark, being careful is the best strategy. No one wants to pay a nonrefundable fee to the USPTO to realize later that the trademark is not registrable. Additionally, suppose the registration has errors, clerical or not. In that case, the client does not want to go through correcting them before getting a real chance of registering the trademark. This analysis and the additional consideration made below are the factors that explain the legal fee you pay your attorney to file your trademark application.

1. The analysis of the mark the client wants

The attorney and the client's first step is to have an open conversation about the trademark that the client wants. For purposes of this meeting, it can be essential that a member of the client's marketing team is present. The attorney wants to understand what the client wants in terms of the trademark in the short and long term, what the mark looks like, and how the client and the team use the trademark in commerce. This meeting is one the most important because it allows the attorney to determine: whether the client can register the mark, whether the client needs to modify the mark, if the client needs to make adjustments in terms of the use of the trademark in commerce, or if the client needs to come up with a new trademark.

2. The number of marks to be registered

After meeting with the client, the attorney understands the client's trademark and can explain whether the client's goals require one or more applications. The client may want to protect several elements of the trademark. For this purpose, the client can register the trademark as a word trademark without protecting any specific visual elements. Suppose the client also wants to protect specific visual or artistic components of the trademark. In that case, it is necessary to file two different registrations, one for the words of the trademark alone and one for the trademark with a visual design.

Additionally, some clients sell products using specific packaging or presentation. These features of a product can be classified as trade dress if they comply with specific requirements. Trade dress is another form of a trademark, and it can be registered too. Trade dress is, generally speaking, the total image and overall appearance of a product or service. It may include features such as size, shape, color or color combinations, texture, graphics, sounds, scents, and flavors, motion and moving images, particular business techniques, and the look and feel of a website.

3. The classes of good or services for mark

Another critical aspect of the attorney's services is understanding the client's business and what the trademark is doing for it. The client may have a business that provides several goods and services; this does not necessarily mean that the mark can be registered to identify all of them. To register a trademark, the USPTO requires that the applicant make a specific description of the type of goods or services distinguished by the trademark and submit proof of such use. That evidence is called a "specimen" of use in commerce.

Considering all this, the attorney must review how the client is selling or promoting its goods or services and what marketing or advertising materials are using. Some clients are unique entrepreneurs that attract customers by talking indirectly about what they sell.  An example of this is Starbucks, which is known to promote itself by "selling you an experience," not a coffee. In terms of marketing, this strategy probably works. However, in terms of trademark law, an applicant must directly show to the USPTO examiner the goods or services promoted by the trademark. In terms of the USPTO, the applicant must show a "direct association between the mark and the goods or services.".

In sum, with the attorney's help, the client can assign a proper classification of goods or services to the trademark and submit the proper evidence to show the use of the trademark in commerce.

4. The registrability of the trademark and the assessment of risk

Finally, the attorney's most crucial task is to build a Trademark Clearance Report covering the analysis explained above and assess possible problems with the registrations if the client and the attorney don't make corrections. The report explains to the client the following:

  • The type of trademark that will be registered.
  • Whether there are prior similar trademark registrations or applications.
  • Whether there are any conflicts.
  • Whether there are any factors that the examining attorney can use to deny registration or request additional evidence.

It is also worth noting that in contrast with the research that a non-attorney can perform, a U.S. trademark attorney will conduct comprehensive research in order to determine the existence of grounds for denial, including, the existence of common law trademarks, the existence of business names similar to the trademark, the existence of marks registered in states where the client wants to do business, the existence of other legal issues like a constitutional bar to registration or right of publicity issues. 

The report built by the attorney is crucial because it is the basis of the client's final decision to proceed with the trademark as it is or to change the trademark.  Additionally, if, despite diligent work performed by the attorney, the USPTO Examining Attorney objects to the registration, the report serves as a basis and a guide to defending the client's trademark application.

Key takeaways

  • You pay your attorney to file a trademark application that will work. Even though the attorney cannot guarantee a 100% probability of success if the attorney has been diligent the possibilities of trademark application approval increase. 
  • A good trademark attorney will work with you to build the trademark application because the trademark must reflect the true identity of your business. 
  • A good trademark attorney will give you a Clearance Report that allows you to make an informed decision about whether to file or not your trademark application. 
  • It is important to take the time to review the report delivered by the attorney and to request a meeting with the attorney to clarify all the points that you don't understand. 
  • Building a successful trademark application is a teamwork process.

About the Author

Giselle Ayala

Giselle Ayala Mateus is a NY attorney with comprehensive experience in transactional law, creative agreements, business formation, and immigration law. She is also the founder of Focus Juridico a not-for-profit project focused on supporting Latin American entrepreneurs and artists.

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