1. TotalTM – Inside Scope
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. 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.
c. Analysis and Opinion. We will 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 fee to cover our software and personnel costs.
d. Application Preparation and Filing. We will work with you to gather the appropriate specimens and create an application. We classify the mark for the 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. Prosecution and Advocacy. After filing, we will monitor the application utilizing sophisticated tracking software. We will keep you informed of any change in status, examination, and the results of the examination.
e. Application Extensions. Intent to Use (1(b)) Application clients can also file up to five (5) six-month extensions for marks requiring additional time to show use. The USPTO charges $125 per extension, and $150 for the Statement of Use; our fee is $75 per filing. We will keep your credit card on file to expend such fees if you request such an extension.
g. 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 – Outside the Scope Trademark/TotalTM Matters
a. Multiple Searches. Our fee structure assumes that you have an identified brand. Our process includes two levels of searches: a knock-out search (using Westlaw and the USPTO databases) and a full algorithmic search (using search services). Sometimes, clients are undecided, and we need to conduct additional knock-out searches, which we generally bill at $150 per hour for paralegal time (software cost complementary). We provide a 25% discount off our search and opinion fee for additional algorithmic searches and related opinions.
b. Response to Substantive USPTO Office Actions. Substantive Office Actions are ones in which the USPTO Examining Attorney takes the position that the mark cannot legally register. The basis is usually related to their cited belief of a “likelihood of confusion” with a USPTO registered mark and/or their belief that the mark is not distinctive enough to obtain registration. As previously referenced, this is a very nuanced area of law, and surgical precision is required in the responsive argument. Our fees for preparing and filing the response vary depending on the novelty and complexity, and we generally find it better for all involved to bill hourly. 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.
c. Client Post Filing Mistakes and Changes. Sometimes, clients change their entity or domicile or provide incorrect information. While we attempt to correct the issue without incurring additional fees. On occasion, the issue requires us to expend significant time and effort, and we reserve the right to bill accordingly, utilizing our hourly fee schedule to correct the USPTO record.
d. International or Multiple Searches and Trademark Legal Services. Either working with our international counsel partners or through treaty, we have the ability to obtain international trademark registration. However, as part of this agreement, besides providing international filing deadlines that are based on your US filing, we will not provide international trademark services as part of this agreement.
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), filing fees not included.
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.