Trademark Application Process
The owner of a trademark is not required to conduct a search to determine whether a mark is available for registration. However, a trademark search can be useful because it can save money and time. If an application is filed and the same mark or a "confusingly similar" mark has already been registered, the application will not be approved and filing fees will not be refunded. By having a search conducted of the Patent & Trademark Office records, you will be able to determine whether an application to register a mark would likely be successful.
Federal Searches. The most important search to determine whether or not a mark is available for registration is a Federal Search. Jay S. Horowitz, P.C. conducts federal searches of word and design marks by reviewing the Patent & Trademark Office search library files for currently registered marks, marks that are pending registration, and marks that have been abandoned. In addition to the manual search of the Patent & Trademark Office files, Jay S. Horowitz, P.C. also conducts on-line computer searches of the Patent & Trademark Office records. After a thorough search, Jay S. Horowitz, P.C. provides clients with an opinion letter as to the likelihood of the requested mark being available for registration as well as copies of any registrations or applications it locates for marks which are similar to the client's mark.
Multi-State Searches. A multi-state search is useful in determining whether individuals or companies are using marks similar to the client's mark without having obtained or applied for federal registration. By also having a multi-state search conducted, you will be able to determine the potentiality of companies seeking to oppose your registration of your mark after it becomes published. Additionally, as discussed above, in trademark law generally the first user of a mark has priority. By having a multi-state search conducted (in addition to a federal search) you can determine the likelihood of parties objecting to your use of your mark based on their use of the same or similar mark for a longer period of time.
Jay S. Horowitz, P.C. conducts multi-state searches by performing a computer on-line search of a database containing over 500,000 state registrations. Additionally, Jay S. Horowitz, P.C. performs a computer on-line search of a database containing over 180,000 names of manufacturers and service providers. Jay S. Horowitz, P.C. provides clients with copies of the similar marks located during the search along with an opinion letter.
TRADEMARK APPLICATION PREPARATION
Jay S. Horowitz, P.C. prepares trademark applications and hand delivers the signed, completed applications to the U.S. Patent & Trademark Office, which is located near our office. Jay S. Horowitz, P.C. negotiates with U.S. Patent & Trademark Office Examining Attorneys regarding descriptions of goods and services, disclaimers of any common language, and other routine issues arising in the trademark application process. Jay S. Horowitz, P.C. keeps clients informed as to the progress of their trademark applications.
Jay S. Horowitz, P.C. maintains contact with clients after they have obtained federal trademark registrations to remind them of the declarations and renewals which periodically need to be filed to retain federal registration of a mark. Jay S. Horowitz, P.C. also assists clients in enforcing ownership of their trademarks. Work performed in this regard includes initiating opposition proceedings at the U.S. Patent & Trademark Office against companies attempting to register a mark similar to the client's mark, sending letters to companies warning them to cease and desist using marks which infringe on the client's registration, and advising on the feasibility of bringing a trademark infringement lawsuit.
Trademark Search Fees. The cost for a federal search is $150.00 per mark. The cost for a multi-state search is an additional $150.00 per mark. The fee for a combined federal and multi-state trademark search is $250.00 per mark (separately the fee would be $300.00). Jay S. Horowitz, P.C. guarantees that search results (along with an opinion letter) will be provided within five business days. If you need "expedited service," for an additional 20% of the base charge, the search results will be provided within two business days.
Trademark Application Fees. The Patent & Trademark Office filing fee for a trademark application is currently $335.00 per classification. (Usually the goods or services used with a mark fall under one class). The fee for Jay S. Horowitz, P.C. to prepare your federal trademark application is $350.00. This fee includes: hand delivery of your application at the Patent & Trademark Office; and negotiating with Examining Attorneys regarding descriptions of goods and services, disclaimers of any common language, and other routine issues arising in the trademark application process. If you file an "intent to use" application, the fee includes preparing and filing the appropriate declaration after use of the mark in interstate commerce has begun. (There will be an additional $100.00 filing fee required at that time). If you need "expedited service," for an additional 20% of the base charge, the completed application will be provided within two business days.
© COPYRIGHT JAY S. HOROWITZ, P.C., 1991, 2003.