Practice Areas


Trademarks, like patents, are handled on a nation-by-nation basis; US states also issue trademark and service mark registrations, but state registrations have very limited effect and are rarely worth even the small, often $10 or $20, filing fee in each state. State corporate and limited liability entity name registrations do not follow trademark “confusing similarity” rules but need only be non-duplicates of prior names already on file in that state.

Trademarks exist in the US independently of any registration procedure; a common law, unregistered trademark used in commerce prior to another’s filing for registration of the same mark for the same goods will trump the later registration, at least in the marketing area of the prior mark. A federal intent-to-use application for registration, however, will trump any later first use of the same mark in commerce in any part of the country. If an applicant knows of uses of the same mark in other parts of the country, he/she/it may file for a “concurrent use” registration, seeking rights to use the mark on the goods or services throughout the nation except for the stated areas where the mark is in use by others; such applications, however, often get bogged down in the US TM Office and may never mature into a registration.

Federal registration of a claim to exclusive use of a mark on specific goods or services is recommended for any mark that is important to its owner, for instance due to investment in creating the product or service or advertising it to the public.  Registration gives exclusive rights to use of the mark and any mark “confusingly similar” to it on specified goods or services and those closely related to it, as being offered in the same channels of commerce or used together, as nails and a nailing machine, automobile tires and wheels, or the like.

If the applicant is not familiar with the entire US market for the proposed goods or services, or to obtain a reasonable assurance that a mark is clear for use, a clearance search should be conducted before commitment is made to a certain mark. A quick search, as through US TM Office files and on, can be done by counsel or personnel of applicant for exact matches and some alternatives, as for $250-$500. A professional search using synonyms and homonyms to portions of the mark, and through state marks and various directories and the Internet, can be ordered from various providers, as Thomson-CompuMark in Boston, for about $500 plus attorney fees of $400-$600 for ordering and reviewing the search results and advising the client on availability of the mark for use. However, no search can “prove the negative”, that no confusingly similar mark is in use on the same or similar goods anywhere in the US – a search can only provide a reasonable, good-faith basis for going forward.

Filing an application for registration may be done on either use or “intent-to-use” bases.  Use requires a “normal” scope of commercial use having been accomplished for the goods or services claimed for the mark. “Token” use, as sending a single item of the same sort as claimed to a relative in another state, with or without payment, is no longer a valid basis for a use-based application.  An “intent to use” (“ITU”) application requires a declaration that the applicant has a bona fide intent to use the mark on the goods or services; multiple applications for different marks for the same goods or services may be filed, but not to “warehouse” such marks. Use of the mark on the goods in commerce or in connection with offering, providing, or billing for the specified services is required prior to registration being granted and within 3 years of allowance of the mark for registration.

A federal application for registration of a trade or service mark can be done on-line, at, or by paper submission to the US TM Office. The on-line application costs just $275 per mark per class, versus $325 per class per mark for paper applications or paper submissions made after filing, but requires use of standard classifications of the goods or services claimed, from lists provided during the on-line application process. The AIPLA reports the average attorney charge in Chicago for filing a TM registration application was about $800 in its 2007 survey results. After the application is filed a serial number is issued immediately, and the case is passed to a trademark attorney in the Trademarks Office for examination. A first action is issued within 4-10 months, usually, either accepting the case as filed or making formal or substantive refusals of registration. Response is possible then to distinguish any prior mark cited, and to avoid any other objections. Upon acceptance the mark is published for possible opposition by others; if none is filed then the mark is formally allowed for registration. A first 6-month time is set for submission of a statement of use of the mark in commerce, with the date of first use in commerce; extensions can be had (at a fee currently of $150 per class for each 6-month extension) out to three years from allowance, when the application is abandoned if no use is made.


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