Reasonable Attorney's Fees and Costs for Trademark Registration

[flgovatt]

I am an attorney for an agency of the Florida state government.  The agency is interested in registering a trademark and has received a quote from an IP attorney.  We need to know what reasonable attorneys' fees and costs would be in this situation.  If you can give me an idea of what an average trademark registration would run in terms of attorneys' fees and costs, I would greatly appreciate it.  Thanks.

[justin_yu]

It depends, I think.
It depends on the complexity of the matter, the popularity and the experience of the attorney.
If you really want to know the exact reasonable fee on this situation, I suggest you to seek more than two attorney to give you their fee schedule, you can choose one of them.

[legalants]

LegalAnts SM

First of all, we presume your question is regarding costs for obtaining a U.S. federal trademark registration. This answer is based on that presumption. If you are inquiring about costs for registering a state trademark registration, however, than please let us know and we will respond accordingly.

With respect to federal trademark registrations, attorney fees vary greatly depending on a particular attorney’s expertise and reputation, the complexity of your case, etc.

A good trademark attorney will likely charge you around $1,000 -$1,300 to prepare a straightforward application for a trademark / service mark and to file the application with the U.S. Patent and Trademark Office (“USPTO”).  That is assuming you are always responsive, provide your attorney with all of the information quickly, and there are no significant questions (such as issues related to use in commerce, specimens, ownership, etc.) that need to be addressed.  Of course, if a client is not responsive and the attorney needs to keep sending numerous reminders and follow-ups before obtaining information, then the attorney’s fees will go up.

On top of the attorney’s fees, you will also have to pay $325 in official USPTO filing fees for each class of goods and services that you want listed in your trademark/ service mark application. (For example, software products are in one class, pharmaceuticals – in another). Depending on certain factors, you may also have to pay other official fees during the prosecution of your mark (such as fees for filing “Extension Requests,”  “Statement of Use” fees, etc.)

It is also important to mention that a good trademark attorney will probably recommend that you conduct a trademark clearance search and obtain an availability opinion before you start using, or file an application for, a certain trademark.  The importance of a trademark search / availability opinion is hard to overestimate. Trust us, you do not want to invest money in a trademark only to realize later down the road that your mark infringes upon a third party’s prior mark.  A good trademark attorney will likely charge you around $700-$1,000 for an availability opinion, depending on whether your mark includes any design elements (logos), etc. 

Bottom line is that if you go with a respectable trademark attorney, you should be prepared to spend at least $2,000-$3,500 per mark before you receive the certificate of registration for the mark.  If there are any complications during the prosecution of your mark (Office Actions from the USPTO, oppositions by third parties, etc.) the fees will be higher.
 
Some boutique IP law firms can charge you a low flat fee (which can be quite negotiable in this economy), and we are sure you will also find some general practitioners or Internet “document preparation” services that will offer you to register your mark for as low as $300-$500.  Whether to hire a cheap service is entirely your business decision, but you should be very careful regarding whom you retain to register your mark.  The trademark clearance and registration processes look deceptively easy and there are numerous pitfalls that one should be aware of.    As in any profession, there are just a few who are really knowledgeable and competent in the area of trademark law; the rest know just know enough to be dangerous to you.   

If you believe your mark represents a significant value and/or there is a chance it will be enforced against others in the future, it is worth to hire a reputable trademark attorney to do everything right in order to register and protect your trademark.

By the way, did you know that ASPIRIN, ESCALATOR and TRAMPOLINE used to be enforceable trademarks owned by famous companies? Well, too bad those companies did not pay enough attention to the protection of those marks.

NOTE:  THE INFORMATION PROVIDED ON THE PRECEDING PARAGRAPHS IS FOR GENERAL INFORMATION PURPOSES ONLY AND IS NOT A LEGAL ADVICE. THIS INFORMATION IS NOT INTENDED TO CREATE, AND RECEIPT OF IT DOES NOT CONSTITUTE, AN ATTORNEY-CLIENT RELATIONSHIP

LegalAnts SM

info@legalants.com
www.legalants.com

[TheTrademarkCompany]

LegalAnts provides a nice summary of some of the costs involved in the federal registration process.  Adding to its comments a few other considerations you should have in regard to your trademark application is whether the firm you hire will provide you with opinions as to the ability to register the state's mark prior to filing for the same in regard to all of the issues considered by the U.S. Patent and Trademark Office and not merely whether the mark could be blocked by another prior pending or prior registered mark (called a likelihood of confusion).

Also make sure to inquire of any prospective counsel if your mark gets an initial refusal to register (called an office action) whether the response to the office action is included in the price they are quoting you or whether that will be extra above what they have already quoted you. 

Hope this helps.

Matt Swyers
The Trademark Company

[flgovatt]

Thanks LegalAnts SM for the advise.  That helps greatly.  Thanks Matt for the additional considerations.

[JSonnabend]

I have got to say, I think LegalAnts' analysis is applicable only to large firm practice.  There are many qualified TM practitioners who handle trademark applications at much more reasonable rates.  The Trademark Company is apparently one, I am another, and there are others as well.  Don't get suckered into the belief that good attorneys always charge thousands of dollars for tasks that shouldn't.

- Jeff

[DogDayPM 9er9er9er]

... The trademark clearance and registration processes are deceptively easy and there are numerous pitfalls .. ..., did you know that ASPERIN, ESCALATOR and TRAMPOLINE used to be enforceable trademarks owned by famous companies?

LegalAnts, since your post looks like something you may be using elsewhere, you might want to consider if you meant to say that the clearance and registration processes "appear" deceptively easy, rather than saying that they ARE deceptively easy.

Also, "aspirin", by the way.

[local-vate]

In searching for trademark services, I am finding that some councils/attorneys are not members of USPTO; and they are providing this type of service.  Are they reputable if they are not even a member of practitioner registered with USPTO?