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 the mark for a USPTO filing fee 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 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. Our fees to prepare and file the response varies. Please note that 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 costs vary), we included 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. 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), trademarks, 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. Fees to collect and provide specimens to convert the mark will be billed hourly.
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), ten (10), and every ten (10) years following. 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 vary, depending on the needed services. Generally, our work is minimized when those services are used, and we bill hourly for such services.