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Title 15 of the United
States Code
 There
are slight differences between the law of
trademarks and the law of service marks. Trademarks
attach to goods and service marks attach to
services. In the most general terms, United States
Registration grants the owner the right to prevent
others from palming off his goods as those of the
Federal Registrant. Very importantly, only the
owner of a Federal Registration can affix the
symbol ® in the proximity of the mark.
Under
current law, the wise domain name owner will
also pursue the appropriate trademark or service
mark registrations.
Trademark Registration procedures and
costs
A
synopsis outlining the costs and procedures
associated with legal services rendered by
Counseling The Creative® in obtaining a Federal
Trademark registration is set forth.
Step 1
Conduct
an electronic Federal Trademark availability
search. The electronic only search does not detect
International, State or common law trademark usage.
Depending upon the creative applicant's needs,
other, more expensive, types of searches can be
conducted. Their costs can range from US$750.00 to
about US$4200.00 or more for a preparation-for-litigation
Search.
a) Electronic Only-When the applicant's
trademark is a "Typed Word Mark" and Counseling The Creative®
performs the search and subsequently renders its availability
opinion, the usual and minimum charge is US$420.00 per "Typed
Word Mark" searched. Before commencing the search, a retainer
is required.
b) Electronic Only- When the
applicant's trademark is a "Combination Word and
Design Mark" or a "Design Mark" and Counseling
The Creative® performs the search and
subsequently renders its availability opinion,
the usual and minimum charge is US$630.00 per
"Combination Word and Design Mark" or "Design
Mark" searched. Before commencing the search, a
retainer is required.
c) The creative intellectual property
owner can conduct his own availability search.
As previously stated above, not all intellectual
property Searches are equivalent.
Step 2a
The
Trademark has been used in commerce. If
the probability of registration is favorable and
the applicant has already used the trademark in
interstate or international commerce, Mr. Pearce
prepares an Application for Trademark Registration.
Counseling The Creative® requires a US$420.00
retainer to prepare the creative application for
Trademark Registration.
a) If necessary, a professional
draftsman prepares the required drawings
depicting the applicant's trademark. Usually,
there will be one page of drawings. Generally,
the draftsman's charges range from US$100.00 to
US$200.00 per page.
b) Counseling The Creative®
does represent creative trademark owners,
who have their own draftsman.
c) The
Trademark Office requires a filing fee for each
international class for which trademark
registration is sought.
Step 2b
The
Trademark has not been used in commerce.
If the probability of registration is favorable
and the applicant has not already used the
trademark in interstate or international commerce
but intends to eventually do so, then, Mr. Pearce
prepares an Intent to Use Application for trademark
registration. Counseling The Creative® requires
a US$420.00 retainer to prepare the Intent to Use
Application for trademark registration.
a) If necessary, a professional
draftsman prepares the required drawings
depicting the trademark. Usually, there will be
one page of drawings. Generally, the draftsman's
charges range from US$100.00 to US$200.00 per
page.
b) Counseling The Creative®
does represent creative trademark owners,
who have their own draftsman.
c) The
Trademark Office requires a filing fee for each
International Class for which trademark
registration is sought.
d) At a time not more than six months,
after the Notice of Allowance for the Trademark
has issued, a statement alleging use in commerce
is filed with the USPTO.
i) Counseling The Creative® requires a
US$315.00 retainer to prepare and file the Statement of Use.
ii) The
Trademark Office requires a filing
fee.
Step 3
In
approximately 9 to 15 months, Counseling The
Creative® receives the First Office Action from
the Trademark Examiner.
a) If the Trademark Examiner has
issued a Notice of Allowability, the trademark
is passed to publication for opposition. If no
other person opposes registration of the
trademark, in approximately 4 to 6 months after
publication for Opposition in the Official
Gazette of the United States Patent and
Trademark Office, the applicant should be in
possession of their US Trademark Registration;
or
b) The Trademark Examiner may reject the Application
for Trademark Registration. Mr. Pearce can then prepare and
file a Response in the Trademark Office. This document is a
factual/legal argument attempting to convince the Trademark
Examiner of his erroneous reasoning in rejecting the Application
for Trademark Registration. The Counseling The Creative®
Office's retainer for preparing this Response ranges from US$630.00
to US$5100.00. The more arguments raised by the Examiner, the
more counter-arguments the law requires to be set forth in rebuttal;
thus, the more expensive the Response. If the Response successfully
convinces the Trademark Examiner of his erroneous reasoning,
then in approximately 4 to 8 months after the Response has been
filed, the examiner will issue a Notice of Allowably. Thereafter,
as in part a, above, the applicant is passed to publication
for Opposition
If
the Trademark Registration is not granted at Step 3
or if an Opposition is instituted, then before
commencing any adversarial representation,
Counseling The Creative® will estimate retainer
requirements and potential expenses.
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