1. TotalTM – What the Fee Includes
a. Information Gathering. We will continue collecting data through a questionnaire/intake form sent to you, looking at your website and marketing materials, and/or general discussions.
b. Strategic Sessions. A distinctive feature of our services is the strategic element. We have already met and will continue to provide brand advice and clearance sessions to discuss the protection and use of the mark(s) attached to your email as Exhibit A. In addition, we continue to collect background on your business and your mark through the information you provide on our platform and/or discussions. We welcome the opportunity to work with your designer, marketer, and/or other creative team members to ensure that brand creation, management, and protection are copasetic. We are also available to discuss brand elements or the progress of the filing at no additional charge (ten minutes or less, give or take).
c. Comprehensive U.S. Search. We have already conducted a “knock-out” search that utilizes the USPTO database and/or Westlaw. This preliminary search is intended to find prior filings for very similar marks and will not provide a complete picture of whether your mark registration will be successful. Once we fully engage, we will also order a third-party search for many iterations of Federal, state, and even international marks, domain names, and “common law” marks to position the mark for success. This search will only be conducted for the United States. In addition, we have the ability and software to analyze multijurisdictional searches for an additional fee.
d. Analysis and Discussion. We will then provide a search report and/or discuss the results. To the extent that you need to contemplate any additional searches (e.g., the likelihood of registration success appears low, there are common law issues, or you change your mind), additional searches require an additional $350 per search to cover our software and personnel costs.
e. Application Preparation and Filing. We will work with you to gather the appropriate specimens and create an application. We classify the mark for International Category (IC) to maximize the mark’s potential while minimizing filing and maintenance fees and discuss the application strategy with you before filing. We also analyze any potential specimens.
f. Application Monitoring. We will monitor the status of the filing and keep you apprised. We use a monitoring service called AltLegal which we have found reliable, which monitors the statuses of the marks daily. We will attempt to communicate with you as soon as we are made aware.
g. Application Extensions. After effectuating the filings, we will also perform filings of any Extensions of Time to demonstrate use. We can seek up to five extensions of time; each extension incurs an additional fee of $75 and $125 for USPTO filing fees. Furthermore, there is a USPTO fee for showing the use of $100. Accordingly, we advise that it is always most cost-effective to file for the mark protection after using the mark in commerce. The earlier the mark is protected/secured, the better, and the increased cost for an “intent to use” application is nominal. We will take this all into consideration when suggesting a strategy.
h. Response to Non-Substantive USPTO Office Actions. USPTO statistics indicate that over 80% of applicants (many with attorneys) receive Office Actions. These are formal objections by the USPTO that bar registration. There are two “levels” of Office Actions (“Office Actions” and “Final Office Actions”) and two general categories of objections: non-substantive and substantive. We handle all non-substantive objections at no charge; a nominal charge is assessed for expedited service if immediate prioritization is requested.
i. Post Registration. Once the mark registers, we are available to help you with ® placement and any other advice regarding using the registration to protect your brand. We also provide reduced rates for our TotalTM clients, e.g., cease and desist orders and our infringement tracking services.
2. TotalTM® – What the fee does not include
a. Response to Substantive USPTO Office Actions. Substantive objections include the likelihood of confusion with a registered mark and/or that the mark cannot be registered because it is descriptive or generic. As previously referenced, this is a very nuanced area of law, and surgical precision is required in the responsive argument. We charge between $500 and $1200 to prepare and file the response. Please note, while we use approaches that attempt to avoid substantive office actions, we are not the USPTO and thus cannot guarantee the mark will clear the USPTO process.
b. International or Multiple Searches and Trademark Legal Services. Occasionally, while conducting our knock-out, we will glance at international positioning (e.g., the mark is prevalent in Great Britain) and inform you. We will not provide international searches or services as part of the standard agreement. Those services are available and readily used by our clients with either present or future focus outside the United States. To the extent we mutually contemplated international searches (additional cost average $500-$800 per), we included in the fee below.
c. Legal Consultation Outside The Trademark Prosecution. We are passionate about helping our clients and want to build a long-standing relationship. Accordingly, we do not want you to be afraid to contact us about anything. However, we need to charge appropriately when we assess substantive legal issues and provide substantive legal advice. Additionally, we offer other services for Intellectual Property (IP), trademark, and business outside the scope of TotalTM.
d. USPTO Fees. USPTO charges vary based on the service. The USPTO charges $350 per IC category. If the mark has not yet been used in commerce (1(b) application), the USPTO will charge an additional $100 to convert the mark. We do not charge additional fees to collect and provide specimens to convert the mark, as long as you have provided current contact information.
Clients can also file up to five six-month extensions for marks needing additional time to show use. The USPTO charges $125 per extension, and our fee is $75 per extension for a total of $200 per extension.
e. Opposition, Cancellation. Third-Party Actions and Outside Litigation. On occasion, third parties contest trademark applications/registrations the USPTO examining attorney has cleared. Generally, this is equivocal to any litigation and is handled for an hourly charge and in a separate fee agreement. Of course, we will review and provide initial guidance to our clients on the risk analysis and budget at no cost.
f. Renewal. As long as your contact information remains current with our office, we will monitor the mark for renewal deadlines. Renewals occur between years five (5) and six (6) and nine (9), and ten (10). Renewal can be strategic, and we offer a flat fee package to process renewal(s).
g. Infringement Tracking and Advice.Trademark registration does not provide an actual enforcement mechanism; it just makes it easier to enforce against infringement in a court action. We work with software vendors who provide tracking of USPTO similar marks as well as takedown services. These services can range from $200 per month to $2500 depending on the needed services. Generally, our work is minimized when those services are used, and we bill hourly for such services.
3. Fees and Payment Terms.
The fee described in attachment A is per discussed mark. Fees do not include all applicable USPTO fees, which are $350 per category.
a. Filing fee payments are your responsibility. You assert you will provide EmergeCounsel with a valid payment processing method for immediate reimbursement of any previously discussed filing fees.
b. Time is of the Essence. The United States Patent and Trademark Office has strict procedural filing deadlines. Therefore, timely response to all correspondence of EmergeCounsel staff is imperative. Failure to do so could result in missing deadlines or failure of the approval of the application.
We monitor our emails and docket and also agree to respond in a reasonable time period to all inquiries.
c. Trademark FAQs. We track all trademark filings utilizing software that “spiders” into the USPTO database daily to determine any status changes. We also employ a paralegal who specifically informs our clients of any changes. Of course, no process is perfect, and we welcome any inquiry into the status of your trademark matter. THE BEST-CASE SCENARIO IS 12 MONTHS FROM APPLICATION TO REGISTRATION. Nonetheless, there are a number of unknowns, with circumstances that can result in, sometimes significant, delays. Please keep in mind the following:
i. All trademark applications are reviewed by an Examining Attorney.
ii. The application is not assigned to an Examining Attorney for at least three months, and the Examining Attorney will generally have their first review done in Month 4.
iii. Over 80% of trademark filings receive “Office Actions,” which generally are technical inquiries or identified issues. Some issues are far more complex than others. To summarize, the USPTO Examining Attorney may delay the application process during this inquiry.
iv. Once and if the mark clears examination, it needs to publish in the Trademark Official Gazette for thirty (30) days. This provides third-parties notice. The waiting time for publication is approximately one month.
v. Even if the mark clears examination, a third-party (usually picked up by organizations who use tracking software to track publications in the Official Trademark Gazette) can object to the registration, which may take the trademark into litigation in front of the U.S. Trademark Trial and Appeal Board.
vi. If the mark does not face or overcome any opposition, the USPTO has nine (9) weeks to print and issue the certificate of registration.
There are likely a host of questions you may have regarding trademark rights and processes. We are glad to answer them. An excellent resource also lists common questions in a Q&A format.