Registration of Trademarks

Stage 1. Preliminary Analysis and TM Search

Actions of the Patent Attorney:

• Collecting brand information (name, logo, business field, territory of use).
• Conducting a search in the USPTO (TESS) database for similar or identical marks.
• Analyzing refusal risks and preparing a written report with recommendations (registrability, class of goods/services, etc.).

Stage 2. Preparation and Filing of Registration Application

Actions of the Patent Attorney:

• Determining the optimal application type: use-based or intent-to-use.
• Classification of goods/services according to the Nice Classification.
• Completing and electronically filing the application via the TEAS system.
• Payment of USPTO official fees ($250–350 per class).

Cost: $400–600 + government fee ($250–350 per each class)

Stage 3. USPTO Proceedings (Office Action, Communication)

Actions of the Patent Attorney:

• Monitoring application status.
• Corresponding with USPTO.
• Preparing responses to Office Action (refusals, remarks).
• Clarifying class descriptions, submitting proof of use, argumentation in case of refusal.

Cost:

1. No Office Action: $0
2. Office Action response: $300–800 (depending on complexity).

What is an Office Action in trademark registration?

Office Action is an official notice from the USPTO (United States Patent and Trademark Office) where an examiner states reasons why a trademark application cannot be registered as filed. This may be either a formal remark or a substantive refusal.

Common reasons for Office Action:

1. Similarity to an already registered trademark
2. Descriptive or generic nature of the name
3. Non-compliance with formal application requirements
4. Insufficient evidence of trademark use

Role of the Patent Attorney:

• Analyzing reasons for refusal or remarks
• Preparing legal response to USPTO remarks
• Making necessary amendments or submitting evidence

Response deadline: Up to 6 months from receiving the notice.

Service cost: From $300 (for simple corrections) to $800 (if argumentation and additional materials are required).

Failure to respond on time will result in application closure. This is why it's crucial to involve an experienced patent attorney promptly.

Stage 4. Publication in the USPTO Official Gazette and Opposition Period

Actions of the Patent Attorney:

• Monitoring trademark publication in the Official Gazette.
• Waiting through the 30-day period when third parties may file an opposition.
• If opposition is filed - representing the client before the TTAB (separate agreement).

Cost: $0 if no opposition is filed
If opposition occurs: from $1,500+ (depending on the dispute)

Stage 5. Registration and Certificate Issuance

Actions of the Patent Attorney:

• Monitoring the completion of the procedure.
• Receiving and forwarding the Certificate of Registration to the client.
• Consultation on proper use of ® symbol, record keeping, and renewal deadlines.

Stage 6. Filing Use Declarations / Trademark Renewals

Actions of the Patent Attorney:

• Filing Declarations of Use (Section 8) after 5 years.
• When required - renewal (Section 9) every 10 years.
• Preparing evidence of actual trademark use.

Deadline: 5/10 years after registration
Cost: $300–500 + official fees ($225–525)