FAQ

Trademarks

1. What is a trademark?

A trademark covers the source of goods or services. A trademark is a distinctive name, phrase, symbol, design, picture, or style used by a business to identify itself and its products to consumers. If the business identified is a service rather than a product, the mark is sometimes called a service mark. A typical trademark could cover something like an internet domain name, the logo of a brand name, an advertising phrase used to identify a company, etc. Once you own the trademark, you can prevent others from selling or advertising products with the same mark or a name which is so similar that it would cause a likelihood of confusion among consumers.

2. What are the benefits of federal trademark registration?

Nationwide recognition of the trademark owner's claim.
Presumption of ownership of the trademark.
You can seek assistance of Federal Courts under the Lanham Act for the protection of your trademark

3. Do I have to be a U.S. Citizen to obtain a federal registration?

No. However, an applicant's citizenship must be set forth in the record and a domestic representative appointed. Our office can serve as your domestic representative.

4. Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used prior to a federal registration being issued.

5. When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.?

The federal registration symbol may be used ONLY once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

6. Do I need an attorney to file a trademark application?

An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice even if he or she is not represented by an attorney. In order to insure that your mark is able to be registered correctly, it is worthwhile to obtain the services of an attorney prior to filing the Trademark Application. Finding someone to repair your mistakes is usually more costly than hiring someone to perform the work correctly in the beginning. The Trademark Office is notoriously fastidious and can be very frustrating when you communicate with them. Many of the trademark services offered on the internet permit you to prepare the application with errors. Six months later you will receive a rejection which you may not understand. Our attorneys are veterans in dealing with the USPTO and will efficiently prosecute and obtain your trademark registration.

7. What is meant by interstate commerce?

"Interstate commerce" involves sending the goods in another state with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

8. How do I find out whether a mark is already registered?

Our office can perform a trademark search and inform you whether there are similar marks to the one you wish to register.

9. What is a trademark used for?

One often sees the symbol ™ next to a phrase or image that a company claims as a trademark, or the symbol ®, which signifies that the trademark or service mark has been registered with the relevant trademark registry. Trademarking is a central legal component for corporate branding. The main purpose of trademark law is to protect the public from being confused or deceived about the origin and quality of a product. This is accomplished by the mark owner preventing competitors from using a mark that the consuming public is likely to confuse with theirs, whether because it is identical. A trademark is protected when the law allows the mark owner to stop competitors from infringement by these confusingly similar marks. It is not necessary for an infringing use to be intentional, though damages in an infringement lawsuit will be greater if there was intent to deceive.

10. What can be trademarked?

A word is not treated strictly as property, and therefore can not be trademarked, because certain words must remain free to identify or describe a class of products in general, to ensure both consumer understanding and competition in the given market (or simply for everyday use). For this reason, a generic term will not be protected (for example, "Apple" as used for apples), or, absent the development of public association with a particular source known as secondary meaning, marks that are “merely” descriptive of the goods concerned ("delicious" or "juicy" for apples), or those marks that are merely a surname or geographically descriptive. Worthy of more protection are "suggestive" marks, which involve more imagination on the part of the consumer to understand a quality of the product than merely descriptive marks (such as the Mercury image for FTD suggesting delivery speed), and arbitrary marks, which are common words but used in a context in which they have no meaning (such as "Apple" for computer). Fanciful marks get the most protection, being invented words or terms (such as "Kodak"). In addition to generic terms, described above, this may include marks used for official government business (such as national flags), marks that are deceptive regarding the nature or origin (including geographic origin) of the product, and marks that are offensive or obscene.

11. Can domain names be used as trademarks ?

Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra protection against their domain being used by others, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names. As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears.

12. How long will it take to get my Trademark Registration?

The U.S. Patent & Trademark Office typically takes, 6 to 9 months to respond to a Trademark Application. Prior to the Trademark being registered, the USPTO will often issue what is called an "Office Action" informing you what additional information they require to register the mark or rejecting the mark for legal or various technical reasons. Upon receipt of an Office Action, we will notify you with an estimate for the fees involved in preparing the response. If you have not used your Trademark at the time of filing, we will need to file an “Allegation of Use” which is a document that certifies that you are now using the trademark in commerce. This document must be filed within 6 months of the Notification from the Trademark Office that your trademark has been accepted. The entire process typically takes a year for the USPTO to actually register your Mark. Currently you may mark your products with the "tm" symbol and once the registration is received, you may begin to use the ® symbol.

13. How much will it Cost?

Trademark Search:

$350.00 for a mini-search of the USPTO data base, however we offer $100.00 off your application fee should you choose to file the application with our office. For a Full search including common law, domain names, business names, trademark filings in all 50 states and electronic yellow pages, we use a specialized search engine developed by a well-established trademark search specialist and the full search is $1,000.

Application Costs:

U.S. trademark application preparation by one of our skilled attorneys $975.00 plus $450.00 per additional class files in same mark, this includes the Trademark Office Filing Fee. If you have a logo which you would like to attach to the mark, there is a graphics charge of $120 so that the logo can be in compliance with USPTO requirements. We recommend that two separate applications be filed when there is a logo so that both the words and the logo can be protected individually.

Discounts:

We also offer large volume discounts. For 2-4 trademarks, we offer $50.00 off per application prepared. If you have more than 5 trademarks, we will give you a $100 discount per application. For more than 10 marks, we offer $150 off per application. Please note that volume discounts apply only when marks are being filed concurrently.

Prosecution of application:

Responding to Office Actions (usually 1-2 responses necessary): The cost for the filing and preparing of responses varies depending on the complexity of the response required. Our office charges a rate of $295 per hour for attorney time and $150.00 per hour for paralegal time.

Filing Amendments to Allege Use/Statement of Use (only required if you have not used the trademark prior to the filing of the application): $800/class.

14. How do I get started?

For your convenience we have attached an information sheet and a credit card authorization form for you to fill out. Once we receive the following items we can begin the trademarking process:

A completed Trademark Information Form & Attorney Fee Agreement Form
A check or credit card authorization form for the Trademark Search and/or Application.
Once we have performed the search and reviewed your information sheet, we can advise you of the number of classes required in filing the application.
If you wish to attach a logo to your trademark, we will need a black & white picture of your logo, attached as a jpg file.
We will then need a sample of your trademark as used with your products or services as well as the check (or credit card authorization form) for the filing of the application.

Patents

1. What can be protected by a U.S. Patent?

Under federal law, a patent can be granted for “any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof”.

a. Utility Patent: A utility patent covers “any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof”. A typical utility patent could cover something like a new biotech method for detecting cancer, a new way to store tools in a truck bed, a new business method, a new computer program, a new screwdriver, etc.

b. Design Patent: the unique shape of an article such as a toy, flashlight, tennis racket, or cell phone.

2. How does a Patent protect my invention?

A patent enables you to sue competitors who copy your invention, giving you a temporary monopoly on your idea, which you can use to either corner the market, license your idea to one or more other companies which will pay you royalties to use your idea, or sell your patent to a company which will then make your invention.

3. Are there any time restrictions?

A U.S. patent application must be filed within one year of the date of: (a) first sale of the invention or (b) it was first publicly used or (c) publication. Foreign applications usually must be filed before any of these acts occur. Most foreign countries do not provide the one-year “grace” period provided in the U.S.

4. How long will my U.S. Patent be in effect?

Utility Patent: 20 years from date of filing of the application

Design Patent: 14 years from date granted.

5. Where is my invention protected when I obtain a U.S. patent?

Your U.S. patent prant (if you wish to file international applications)

6. What is a provisional patent?

A provisional patent is a portion of the utility application. The inventor is permitted to spread the cost of the utility patent over a one year period. The utility patent application must be filed within one year of the provisional application.

7. What advantages do I gain by filing a provisional application over filing a full utility patent application?

A provisional patent application is less expensive and easier/quicker to prepare, and will give the inventor one year from date of filing to see whether the invention is going to be enough of a success to warrant filing the more expensive and time-consuming utility application.

8. What are the disadvantages of filing a provisional application compared to filing a utility patent application?

There is an additional filing fee of approximately $100 charged by the USPTO. Your patent application is pending for a longer period of time which means you lose one year from your patent term. If you are certain your invention is going to be commercially success and you can afford to do so, file the utility patent and skip the provisional. If you would prefer to have a year to explore the financial feasibility of your invention before committing to paying for a utility application, go with a provisional first.

9. How much will it cost?

Patent Search: Our office will perform an online mini-search for $450.00. This is just a preliminary search to see if there are any patents that are obviously similar to your invention.

Detailed Patent Search: $900.00 to $1,000.00; we have an attorney based in Washington D.C. who is trained in patent searches. He will search all the patents in the USPTO data base and we will send copies of all similar patents to you for your review. We will discuss the results and compare them against your invention.

Provisional Application: minimum of $3,000 [depending on the complexity of the design] plus the USPTO filing fee of $175.00 and drawings at $100.00 per sheet. (Note that the cost paid for the provisional application will be applied to the filing of the Utility Patent should you decide to proceed in one year)

Utility Patent Application: $5,000 and up [depending on the complexity of the design] for the application (minus the provisional fee of $2,500-$3,000 if provisional was prepared by this office), plus the Filing fee of approximately $1,000.00 (discounted to $575.00 if you qualify as a small entity having less than 500 employees) and the drawings of $100 per sheet.

Additional Fees: responses to Office Actions, additional drawings (if needed), amendments (if required), foreign filing, printing, issue, publication and maintenance fees for 3, 7 & 11 years after issue, PCT and/or Paris Convention filing. Not included is the cost of enforcement. Our office charges hourly fees for Responses to Office Actions. Our rate is $295 per hour for attorney time and $150 per hour for law clerk time. We will provide you with an estimate prior to any work performed. Once the patent application is approved by the Patent Examiner and is ready to issue, an additional USPTO fee is required.

Design Patent: (protects the appearance, but not the function of your invention) $1,500-$2,500 dependant on the complexity of your design, plus the filing fee of $420.00 ($210.00 if you qualify as a small entity) and patent drawings at $100 per sheet. Once the patent application is approved by the Patent Examiner and is ready to issue, an additional USPTO fee is required.

10. How do I get started?

For your convenience we have attached an information sheet and a credit card authorization form for you to fill out. Once we receive the following items we can begin the trademarking process:

A completed Patent Testimonial
A check or credit card authorization form for the Patent Search, please specify full search or mini-search.
Once we have reviewed the patents in your search we will discuss our recommendations on how to proceed.

Copyrights

1. What can be Copyrighted?

A copyright protects a form of artistic expression. Copyrightable subject matter includes e.g. books, sculpture, drawings, computer software, music, photographs, web sites, videos and movies.

2. What will my copyright protect?

A copyright provides its holder the right to restrict unauthorized performances, copying and reproduction of an original artistic expression (i.e. literary works, movie, music, etc).

3. What are my rights?

to make and sell copies of the work (including, typically, electronic copies)
to import or export the work
to make derivative works
to publicly perform the work
to sell or license these rights to others

4. What is meant by the phrase "exclusive right"?

The owner of the copyright alone is allowed to do these things; everyone else is prohibited from doing them without the copyright holder's consent. In the United States, the owner of the copyright may be the employer of the actual author rather than the author himself, known as a "work for hire".

5. How do I enforce my copyright?

Copyrights are generally enforced by the owner in a civil law court, but there are also criminal infringement statutes.

6. What are the benefits of registering my copyright?

Without a copyright registration, you cannot sue for copyright infringement. If you register your copyright before the infringement occurs, you may be entitled to “statutory damages” without having to prove actual damages.

7. How long do I have protection?

The term of the copyright is the life of the author plus 50 years.

8. Do I need to renew my copyright after it is registered?

No.

9. How much will it cost?

$500.00, plus a $45.00 filing fee for the copyright office. We offer a $100.00 discount per copyright for multiple copyrights.

Additional Costs: Possible responses communications from the U.S Copyright Office, in the process of obtaining your copyright. We will provide you with an estimate of any additional fees responding to Office Actions. The amount is based on the complexity of the response.

10. How do I get started?

For your convenience we have attached an information sheet and a credit card authorization form for you to fill out. Once we receive the following items we can begin the copyright process:

A completed Copyright Information Form
A check or credit card authorization form for the Application Fee (or fees if filing multiple copyrights)
We will then need 2 (two) copies of the work that you wish to copyright. You can mail those to the address listed on the Copyright Information Sheet.