Lawyers? Cost and Ease of Registering Federal Service Mark

[visionology]

Hopefully someone can help answer this one for me as there seems to be quite a few lawyers here.

I want to register a service mark with the Federal Patent & Trademark Office. Their website is very convoluted so I can't figure out how difficult it is and what the cost is.

I searched and the name is not taken, I have a black and white 2 color logo ready for the service mark but I'd like to know if this is a simple form I can fill out and what the costs are. I really don't want to have to hire a lawyer if I can just do this myself.

Also if I register a service mark in a State instead of Federal and someone tries to register it federally would I be in trouble or could I protect the name? I'm trying to figure out the purpose of a State mark if the Federal one automatically over-writes it.

Any help is appreciated.

Thanks
Neil

 

[lawyerdad]

Originally Posted by visionology

Hopefully someone can help answer this one for me as there seems to be quite a few lawyers here.

I want to register a service mark with the Federal Patent & Trademark Office. Their website is very convoluted so I can't figure out how difficult it is and what the cost is.

I searched and the name is not taken, I have a black and white 2 color logo ready for the service mark but I'd like to know if this is a simple form I can fill out and what the costs are. I really don't want to have to hire a lawyer if I can just do this myself.

Also if I register a service mark in a State instead of Federal and someone tries to register it federally would I be in trouble or could I protect the name? I'm trying to figure out the purpose of a State mark if the Federal one automatically over-writes it.

Any help is appreciated.

Thanks
Neil

Not my area, but nolo press is usually very good for stuff like that. I'm providing a link, although I haven't actually reviewed their material on this issue myself. I understand the desire not to hire a lawyer, but it's my understanding that you can have this done for a relatively small pre-negotiated fixed price by a lawyer who does this kind of work. You then get the added benefit of knowing there's somebody you can blame if things get screwed up.
But by all means, check out the nolo stuff and do it yourself if you're comfortable.

http://www.nolo.com/article.cfm/Obje...D/310/274/FAQ/

 

[bryce330]

Hi - I do this for a living so I can answer your questions (although this post should not be considered equivalent to the advice of a lawyer who has agreed to provide you legal services in an attorney-client relationship).

The process of filing an application is not very difficult but the USPTO web site is extremely user-unfriendly.

You want to go to the main USPTO web page, then click on Trademarks, then File, then File a New Application (Principal Register).

Choose the TEAS Form and then just fill in the blank fields.

The cost is $325 for one class of goods or services. If you do not know the class of your services, you can look them up in the Online Manual of Goods and Services. It will also ask you to choose a filing basis for each class. If you have already used the mark, select 1(a) - Use in Commerce, and enter the dates of first use and first use in commerce. If you have not used the mark, select 1(b) - Intent to Use.

If you have a drawing of the mark in .jpg or .pdf format you should be good to go. The only other information required is the name, address, entity type, etc. of the applicant.

Please feel free to ask if you have any other trademark-related questions.

 

[visionology]

Thanks for the link just read the first few pages seems very helpful. Wow, $325 to file...much higher than the state filing.

bryce330, thanks a lot. Question for you if you don't mind.
I've did some reading today and service marks seem to be in this gray area where you are allowed to use a TM or SM without registering as they are protected under "common law" however if someone registers the name federally while you are operating under this common law I don't see how'd you'd be protected. Does that mean if I put a SM or TM next to my business name it will be secure under "common law"? What are your thoughts on this?

 

[bryce330]

Also, a state trademark registration is basically completely worthless. It would not prevent someone from registering the identical mark as a federal trademark. You could oppose the federal registration, but you can already do this based on your common law rights so there is really no purpose in obtaining a state registration.

 

[bryce330]

Originally Posted by visionology

I've did some reading today and service marks seem to be in this gray area where you are allowed to use a TM or SM without registering as they are protected under "common law" however if someone registers the name federally while you are operating under this common law I don't see how'd you'd be protected.

Exactly - you do not have to register the mark federally, but it gives you a lot of protections and presumptions which you will not have if you rely solely on common law rights. If somebody tries to register the mark federally and you only have common law rights, you can oppose the application, but the burden will be on you to establish your prior right to use the mark (you would also have to be monitoring the USPTO database to even be aware of the federal filing).

 

[visionology]

Originally Posted by bryce330

Exactly - you do not have to register the mark federally, but it gives you a lot of protections and presumptions which you will not have if you rely solely on common law rights. If somebody tries to register the mark federally and you only have common law rights, you can oppose the application, but the burden will be on you to establish your prior right to use the mark (you would also have to be monitoring the USPTO database to even be aware of the federal filing).

That is one of those things I would be worried about. A business could pop up with the same name in some other state and I'd never know about it but I definitely don't want to be associated with another business, let's say if they have a bad reputation. Maybe I should just bite the bullet and chalk up the $325.

I read in that link you have to reregister every 5 and 10 years. Are the costs $325 again every 5 and 10 years?

Thanks

 

[bryce330]

The cost to file the five year renewal (which is not really a renewal but an affidavit of continued use) is $100. You do not need to file this every five years - only between the fifth and sixth year following the date of registration.

The cost to file the renewal every ten years is currently $400 (which will almost certainly go up by the time you would actually be renewing your mark).

However, it is definitely well worth it, IMO - if you rely solely on your common law rights, you will be spending far, far more if you ever need to defend your mark or enforce it against an infringer.

 

[visionology]

Great that helps a lot, it doesn't sound too complicated. If I run into any small snags I'll be back

Thanks