Trademark & Copyright Registration: Cost, Timeline, Necessity | Intellectual Property
How to Register a Trademark…
Trademark registration is one of the most effective and practical means to protect your intellectual property. Whether you own a company, brand, product, or website, a trademark can protect you. Not only does a registered trademark protect your business or product, but shields you from any current or potential competition. As a legal entity, securing trademark protection is crucial. Many folks believe that applying for a trademark is a simple process. However, approximately 20% of United States Patent and Trademark Office (USPTO) applications are denied in the initial stage.
A trademark is an intellectual property device such as a word, design, symbol, logo, or sign distinctly associated or identified with a specific merchandise, service, or brand. As such, it provides the owner with exclusive use rights as a maker or seller.
Fun fact, both the name of a company and/or the name of a product can have registered trademarks. Amazon, McDonald’s, and Apple are good examples of this. You may have seen the ® placed near the name of those companies or their logos. Officially registered USPTO marks are permitted to use the ® symbol so as to convey that registration to the public.
How Does a Trademark Work?
Trademarks function on the basis of use in commerce. In other words, trademarks are used to distinguish and identify the ownership of goods or services available for purchase. They are typically registered for the names of products or businesses. Trademarks may also apply to the unique design of a storefront or a domain name, for example. While it is possible to obtain rights to a particular trademark with the USPTO prior to its active use, you cannot register that trademark until you have actually used it in commerce. This is the difference between applying on a current-use (in commerce) or an intent-to-use basis (not yet in commerce). The cost of an intent-to-use application tends to be higher because of additional filing requirements.
Cost of Trademark Registration
When applying for a trademark, each class of goods or services being registered with the USPTO costs $250 or $350. The goods and/or services you will be using with the trademark have to be identified with the USPTO. There are around 45 different classes you can register in. Depending on your goods or services, you may have to register in multiple classes.
You have two trademark application filing options. TEAS Plus or TEAS Standard. TEAS stands for Trademark Electronic Application System. The cost of the filing fee for TEAS Plus is $250 per class of goods and/or services. While the cost of TEAS Standard is $350 per class of goods and/or services.
The basic difference between the two filing options? TEAS Plus requires an applicant to select goods and/or services identifications (classes) pre-approved for use by the USPTO. TEAS Standard, on the other hand, does not require an applicant to select from a pre-approved identification list, and may be more suitable for a custom goods/services category. Selecting the appropriate identification class or classes for your brand’s purposes is vital, as they should very accurately represent how the trademark is being used or will be used in commerce.
How Long Is The TM Registration Process?
The trademark application process takes about 9 to 15 months, but may take longer in the event that the USPTO examining attorney – who approves or denies the application – engages in extensive communication with the applicant. Having an attorney complete the trademark application on your behalf generally expedites the entire process. At our firm, we inspire trademark application success because we provide all of the required information up front, which greatly reduces the need for time-consuming communication between the examining attorney and the applicant.
Once your trademark is registered, your goods and/or services are protected as long as the mark is in use in commerce, and the mark is renewed by the owner every 4 to 5 years.
Why Register a Trademark?
While you are not required by law to register a trademark for your merchandise or service in order to offer it to the public, having a trademark comes with many benefits. Consider that if you intend to sell a product on Amazon, that platform requires a trademark registration or a pending trademark application for brand registry. You are able to sell on Amazon without joining brand registry, but that exposes you to many risks, such as erosion by the competition.
Five Step Trademark Application Process
- Our team determines your business needs during a free initial consultation.
- We conduct an in-depth search of all registered, pending, and non-registered trademarks similar to your intended mark to assess its viability.
- Our team discusses the search report with you, noting any potential issues, and develops a strategy for moving forward.
- Stockman & Poropat, PLLC drafts and files the trademark application.
- We monitor the USPTO application process, address any concerns, and take action if necessary.
If you have already familiarized yourself with the process, please fill out our File My Trademark page.
Trademark Oppositions | How to Oppose a Trademark
After you file a trademark application and it gets approved by an examining attorney, you have a reason to celebrate! That’s certainly not a small feat. The resources, energy, and time you invested paid off. It’s a major achievement for any business owner.
That being said, getting a trademark approved by the USPTO isn’t exactly bulletproof. An approved trademark may face opposition. Once the mark has been included in the Official Gazette, anyone with the proper standing can oppose it. If they should wish to do so, the opposition has to be filed within 30 days of the trademark’s publication. Anyone who opposes or wants to can also request an extension for up to 90 days. But, the opposition can’t be filed after 180 days of the mark’s publication.
Know the Ins-and-Outs of Trademark Opposition
Whether you want to file an opposition, or someone is filing one against your mark, knowing the ins-and-outs of opposition is important. Evidence is key! To successfully oppose a trademark, you’ll need evidence. Once the opposer submits an opposition notice, the mark owner will be notified. The main reason why oppositions are filed is because they believe an existing mark may damage their trademark. Action can only be taken after the opposer establishes a legitimate reason with the Trademark Trial and Appeal Board (TTAB). This is what’s called “standing.” The “entitlement to bring a statutory cause of action” is how it’s defined. If the TTAB is not convinced, then the standing isn’t established.
You can learn even more about trademark oppositions here.
Copyright Registration
As a business or brand owner, you may want to consider copyrighting the expression of your ideas. A copyright is a tangible form of protection of those ideas. Registering a copyright enables you to guard your exclusive right to print, publish, film, perform, or otherwise copy a protected work. Examples include a screenplay, music, text, drawing, logo, t-shirt design, or the free PDF you offer your email subscribers. Virtually any creative work that can be manifested in a tangible form may be copyright protected. Basically, the copyright does not apply to ideas themselves, but the expression of them.
Once registered, the copyright protection for a person is valid for the life of the author or creator plus another 70 years after their death. If the copyright is registered under an anonymous name or business, the protection lasts 95 years from the date of the initial publication or 120 years from the date of its creation.
Two Types of Copyrights
There are two types of copyrights. The first is what is known as common law copyright and the second is a federally registered copyright.
Common law copyright comes into being once an original piece of work is created. This means, no other person has the right to copy that work or use it in any other way. Federally registering a copyright with the U.S. Copyright Office, meanwhile, allows you to fully protect your original work by giving you more thorough rights. The copyright holder alone maintains the right to display, reproduce, perform, or create related versions from the original work.
The principal benefit to federally registering a copyright is that it allows you to sue for copyright infringement. In order for you to sue for copyright infringement, you need a copyright registration. Having your copyright registered also permits you to claim statutory damages up to $150,000 per infringement. It also allows you to collect attorney’s fees upon winning a copyright infringement case.
The Process of Registering a Copyright
The process of registering a copyright is fairly quick and relatively cheap. Especially when compared to trademark registration and other types of intellectual property. Each original work costs $65 to file for a registration. And, you can file for multiple works if they meet a specific criteria for a discounted fee, as in the case of a series of photographs or drawings. In 2020, a law passed that further allows registration of multiple short-form online literary works under a single copyright. Which means, if you consistently write and post blurbs on social media, you can register those posts as a compilation. In this way, you are protecting that work for a reduced price with minimal effort. The copyright application process, from filing to registration takes between two and nine months.
There are essentially three steps for copyright registration:
- Complete an application for the U.S. Copyright Office.
- Pay filing fees.
- Deposit/submit a copy of your original work with the U.S. Copyright Office.
Do I Need a Copyright?
Once the above three steps have been taken care of, your application will be examined by a registration specialist. They will decide if the submitted work is eligible for copyright registration. Then, the specialist will check to see that all other requirements have been satisfied. If they declare the submitted work non-copyrightable, and/or the application requirements are incomplete, your application may be rejected. If all goes well and the specialist approves the application, the U.S. Copyright Office will issue a Certificate of Registration, making you a copyright holder. The certificate is then the proof that you own the copyright. As a copyright holder, you may then utilize the official registration to issue cease-and-desist orders and/or file any necessary lawsuits.
A copyright is only applicable to the expression of ideas. That is to say, ideas themselves can’t be copyrighted. Considering copyrighting a name, short phrase, simple shape, slogan, single word, or title? You can’t! Not to worry, though, you’re not legally required to register a copyright for any given creation. And, an original work is automatically imbued with copyright protection once it’s created. Meaning, even without registration, no one else can copy your creation.
What’s the Point of Copyright Registration?
What’s the point of copyright registration? Even though the work is protected once created, you won’t be able to fully and legally protect your work without registration. If you come across the need to sue someone for infringement, you need copyright registration. Making sure the copyright is filed properly is super important! If the registration was improperly filed and you try to sue for infringement, your case could be thrown right out. To get the maximum benefit from copyright registration, be sure the copyright is registered properly prior to filing any lawsuits. The registration needs to be in place before the infringement happens for that kind of lawsuit to work. Moreover, the registration has to have happened within 30 days of when you learned of the infringement. Additionally, if a work was published, you have to register the copyright no later than 90 days from the initial date of publication.
You can read further about how to ensure your work is protected with copyright registration here.
Reach out to our firm for a free consultation before you apply for a copyright on your own. Our attorneys can assist you in determining whether or not a copyright makes sense for your original work. We do not want you to waste your time or have your application rejected! If you would like to proceed, our attorneys can greatly increase the likelihood of a successful outcome.
Infringement Defense
If you have been accused of trademark, copyright, or patent infringement, you should act as quickly as possible to resolve the matter. Infringement claims against you can result in frozen funds, temporary business account suspension, and/or withholding of inventory. Needless to say, infringement issues are extremely disruptive and sometimes very costly.
Typically, the notice of the infringement claim will be sent as an email from the trademark, copyright, or patent owner. The owner will state their ownership of a given mark, describe the infringement, and request you no longer use that mark. If you fail to respond or comply, the owner will then issue a formal cease and desist letter. That letter will demand that you stop the potentially infringing conduct you have engaged in. The cease and desist letter also serves as clear knowledge of the infringement claim. So if you continue to engage in the infringing conduct, you may then become subject to liability for willful infringement. If the infringement is deemed willful, the owner will be awarded a higher cost of damages. As a result, it is key that you respond to all correspondence regarding infringement claims made against you and/or your business.
Infringement Claims and E-Commerce Sellers
Perhaps you are an e-commerce seller offering goods to consumers on platforms like Amazon, eBay, Alibaba, AliExpress, DHgate, Walmart, and Wish.com. If that is the case, the notice of the infringement claim may arrive as a notification from the service provider hosting your online store. It will state that your goods and/or services were removed, your account was suspended, or that you are banned. Additionally, the account balance will be frozen due to a temporary restraining order that will remain until the case has been resolved in court. Similarly, it is always in your best interest to provide a response. With a response, you can likely avoid a default judgment or the need to abandon the hard-earned money in your frozen account.
Use an Attorney to Handle Infringement Claims
If you have been affected by claims of allegedly infringement, obtain legal counsel!!! Many online sellers based in China, for example, are accused of various infringement and/or counterfeiting, and struggle to understand how to take action in response. Or, the sellers consider the cost of taking legal action too high, so they ignore the notice. This is a very common mistake and may subject you and your business to even further liability, regardless of the claims’ validity.
The claims made against you can be challenged and possibly defeated, so we strongly recommend you do not delay your response or do nothing. Inaction, delay, or non-compliance can lead to a summons to appear in court and/or drag the case out for years. If a default judgment is issued, a business owner may have to pay significant damages. Not only that, their account and/or business may also be suspended, and in some cases have to completely halt its operation.
Have any questions or concerns regarding trademark registration, copyright registration, or infringement defense? Contact Stockman & Poropat, PLLC today! We are excited about protecting your business!
Up next we will be discussing Trademark Lawyers. Also be sure to check out our article on Contract Attorneys.
