If you are considering filing an application to register your trademark with the United States Patent and Trademark Office (USPTO), you likely have a number of questions about the trademark filing process and the associated trademark registration costs. Navigating the USPTO system can be a complex undertaking even for experienced professionals, and although working with an attorney based in the United States is only a requirement for trademark owners filing their trademark applications on a foreign registration basis under the Madrid protocol, as a general rule consulting with an intellectual property (IP) attorney prior to filing an application to register your trademark is generally recommended, as an overview of the trademark registration costs and application requirements as you prepare to register a trademark can often help trademark owners to recognize potential problems with their USPTO trademark applications and take proactive steps to avoid them. To learn more about trademark registration costs and other aspects of the federal trademark registration process, schedule a consultation with one of the experienced IP lawyers at Sullivan & Carter, LLP by calling our Chicago-based office today at (929) 724-7529.

Trademark Registration Benefits

The intellectual property rights protections afforded by official trademark registration can be substantial. Planning ahead for trademark registration costs can put a business in position to take advantage of these protections while remaining within the often tight budgetary constraints that many businesses experience as they are seeking to build a strong foundation for their future successes.

Some of the many benefits of federal trademark registration include:

• Establishing priority of use: Trademark intellectual property rights are generally held to be first-come, first-served, so establishing early documentation of trademark ownership can often prove valuable in case of a dispute.
• Recordation of registration: As part of a wider cross-agency governmental effort to limit intellectual property rights infringement,<a href="https://www.cbp.gov/trade/priority-issues/ipr/protection"> U.S. Customs and Border Protection (CBP) offers an electronic recordation of USPTO trademark registration. Recordation can be especially valuable to businesses whose products are likely vulnerable to infringement by counterfeit trademark use.
• Use of ® symbol: While a trademark itself serves to communicate to consumers the source of a good or service – allowing trademark owners to distinguish their offerings from other similar items in the marketplace – the ® symbol adds another layer of distinction that to many consumers can serve as a shorthand for authenticity, reliability, and even legitimacy.

Priority of use can also be established by state-level trademark registration, but an unfortunate tendency among individuals and businesses to overlook state databases as they develop new trademarks can make state trademark registrations less effective as a deterrent against unintentional trademark infringement than registration through the USPTO. CBP recordation and use of the ® symbol are only available for trademarks approved for federal registration.

Trademark Registration Fees

Despite these noted advantages, many business owners and entrepreneurs experience concerns about their potential trademark registration costs. Fees for state trademark registrations are set by their respective states; for trademark owners seeking to take advantage of the more robust IP protections afforded by USPTO registration, some of the most common factors affecting total trademark registration costs include the application filing basis selected, the number of trademark classes involved, and the number of timeline extension requests (if any).

Initial Trademark Application Filing Fee

The filing fee required to submit an initial application for trademark registration will depend on a few factors. The largest of these factors is usually the number of trademark classes for which the applicant seeks registration, as each initial filing fee is applied per trademark class.

• Paper filing: A hefty $750 fee is applied to paper filings, largely as a measure designed to support adherence to the USPTO’s policy of pursuing an electronic format for both application filings and registry searches.
• International filing: Applicants filing for recognition of trademark ownership within the United States under the Madrid Protocol are subject to a $500 fee, and will need to be managed by a trademark attorney licensed to practice within the United States.
• TEAS Plus filing: Applications for trademark registration filed by individuals or businesses domiciled in the United States are eligible for a reduced fee of $250 per trademark class if their applications meet specific criteria outlined in the USPTO’s TEAS Plus filing guide.
• TEAS Standard filing: Domestic trademark applications that do not meet the criteria for TEAS Plus applications require an initial filing fee of $350 per trademark class.

An additional fee of $100 (per trademark class) is assessed on applications submitted as TEAS Plus that are determined not to meet the required specifications; these applications will not be processed until the adjusted fee requirement has been met. An experienced trademark lawyer with Sullivan & Carter, LLP may be able to help you determine whether your trademark application is likely to meet the USPTO requirements for TEAS Plus processing.

Common Trademark Fees During Application Process

There are also a number of trademark registration costs that may accrue during the application process. One of the most common is the $100 fee (again per trademark class) applicants who submitted their initial applications under the Intent To Use (ITU) filing basis will need to pay, either when they submit an Amendment to Allege Use (AAU) or when they submit a Statement of Use (SOU).

The AAU is submitted if a business gets its trademark into use in commerce relatively early in the application process; applications filed on the ITU basis involve a “pending” stage in which the registration approval is not considered final until the applicant demonstrates that the mark has entered use in commerce, so an amendment to allege use can sometimes shorten the overall timeline, if the trademark owner is able to establish use in commerce relatively early in the process. At the other end of the spectrum, applicants who have selected an intent-to-use filing basis sometimes encounter unexpected difficulties in getting their trademark into commercial use, and in that case they may need to pay a further $125 fee to request a six-month extension of the deadline for filing their statements of use, for each trademark class covered under the initial application. ITU applicants may submit up to four of these SOU timeline extensions, although there is an obvious economic incentive to submit the SOU promptly whenever possible. Once the trademark enters into use in commerce, filing the SOU will require the same $100 per class as would an AAU submitted earlier in the trademark registration process.

Trademark Registration Renewal Fees

Federal trademark registrations require periodic maintenance filings, and their associated fees should be taken into consideration when calculating overall trademark registration costs. The most common of these post-registration fees include:

• §8 declaration: In order to maintain their trademark registrations, owners of trademarks registered with the USPTO must file a declaration that the mark is still in use, or that it is not in use for an “excusable” reason (as defined by the USPTO) between the fifth and sixth years after their initial registration. The fee for filing the §8 declaration is $225 per trademark class.
• §8 and §9 combination filings: The first trademark registration renewal application is due between the ninth and tenth years of a trademark’s registered status; thereafter, the §9 renewal is due every 10 years. Because §8 declarations are also due on a 10-year schedule, however, in practice it is typical for trademark owners to submit their decennial paperwork as a single, combined declaration and application for renewal of trademark registration. The combination filing also combines the filing fees for the declaration and the renewal: $525 per class.

Additional post-registration trademark fees may apply if trademark owners miss an initial deadline and need to submit their documents during the USPTO grace period. Requests to file during a grace period can themselves become expensive, so the holders of trademark registrations have a significant incentive to remain vigilant regarding their trademark maintenance filings and the associated timelines.

Get Answers to Your Trademark Registration Questions and Ensure Your Legal Rights are Protected

Registering a trademark with the United States Patent and Trademark Office can confer a number of advantages, including appearance in the Principal Register, the opportunity to record registration with CBP, and clear documentation that can help defend trademark owners’ intellectual property rights in case of a trademark infringement dispute. For many entrepreneurs and business owners, the benefits of USPTO registration far outweigh the trademark registration costs – but planning and budgeting appropriately for the trademark application filing fees, and for the costs of periodic renewal filings, can be important, especially for startup businesses seeking to register a trademark for the first time. Get help assessing your likely trademark registration costs and prepare for your USPTO trademark application by scheduling a consultation with one of the experienced partners at Sullivan & Carter, LLP. Our Chicago-based IP attorneys handle trademark registrations nationwide, so call (929) 724-7529 today to learn how we can meet your business needs.