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FAQs

How our website works

Why do you need all this information?

Because we really want to help you do this right. We want to file an application that has a chance of getting to registration, not just have you pay us and the Trademark Office with little or no chance of success. And we want you to be able to use that registration against an infringer and not have the infringer be able to challenge the validity of your registration.

How fast will you get to work once I put in all my information?

We take customer service and our professional obligations seriously. Here’s our commitment to you. We’ll always strive to do better than this, but we absolutely don’t want to make promises we can’t keep.

Once you become a client, pay our fee,... we will... no later than...
and complete all the information required by the service package you choose review that information and offer suggestions the end of the second full business day*.
authorize the content of the application, provide the files we need to send to the Trademark Office, and pay the Trademark Office fees, file your application the end of the second full business day*.
and ask us to do a search, do our search, prepare our report and upload it to your portal the end of the third full business day*.
ask us to file a Statement of Use, provide the files we need to send to the Trademark Office, and pay the Trademark Office fees, file a Statement of Use the end of the third full business day*.
ask us to file a Request for More Time, and pay the Trademark Office fees, file a Request for More Time the end of the third full business day*.
and asked us to evaluate an office action, evaluate the office action and report back to you the end of the third full business day*.
ask us to respond to an office action, and provide the information we need, research, prepare, and file a response to office action the date the response is due at the Trademark Office.
*A business day includes weekdays from 9:00am to 5:00 Eastern Time in the United States, except for holidays recognized by the federal government of the United States.

The other sites offer a “direct hit” search. Why isn’t that good enough?

This isn’t like doing a domain name availability search. Whether or not the Trademark Office will register your trademark depends (among other things) on whether there’s already an application or registration for a “confusingly similar” trademark. An identical trademark that they show you from a direct hit search might not be a problem, but a close one that doesn’t come up could be a huge problem. For example, if you wanted to register WAISTED TALENT for a line of women’s wear, the direct hit search wouldn’t show you the registration for WASTED TALENT for clothing, which is a huge problem for you. But it would show you WAISTED TALENT for a company that helps celebrities lose weight, which wouldn’t be a problem for you.

Why can’t I buy certain A la Carte services?

The only A la Carte options available to you are ones that apply to your situation. For example, if you filed an application based on “use” you can’t buy “Preparing and filing of Statement of Use” because you don’t need to do that.

Why can’t I buy ANY A la Carte services?

A la Carte services are available only to existing clients. The only A la Carte service you could need, without a pending application, is the availability search. Please check out our packages that include availability searches and then Get Started!

I got an office action a while back and the deadline is in a few days. Why can’t I buy A la Carte services relating to that office action?

Preparing a response to an office action takes time. We take pride in doing excellent work for our clients. We can’t accept requests to prepare a response to an office action when there’s not enough time left for us to do the required research and write a thorough and convincing response.

I tried to buy “Preparing and filing of Statement of Use” and every time I click the box, the box for requesting more time to file a Statement of Use also becomes checked. I don’t want to buy that. What’s up?

That happens whenever you’re within 2 months of the deadline for filing the Statement of Use. There’s always a possibility that the Trademark Office will reject your Statement of Use. If you find out it was rejected after the filing deadline, and you haven’t extended the time to file, then your entire application will be dead. Given the investment you’ve made so far in the application, we automatically file a request to add more time unless we can be fairly confident that you’ll have heard back from the Trademark Office with approval or rejection of your Statement of Use before the deadline to file. That’s just our rule because we really believe it’s in your best interest. If you disagree, then you’ll need to file the Statement of Use yourself and take the risk that it will be rejected after the deadline.

Why can’t I upgrade my service?

Service upgrades are available only before you purchase a package, but most of the services that are included in the upgrades are available as A la Carte services, which you can access through the link at your portal.

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Fees and Costs

How much is all this going to cost?

The Trademark Office charges filing and other fees, and you’ll have to pay those fees whether you go it alone, use another service, or let us help you. The application filing fees are $275 or $225 for each international class covered by your application. There are additional fees if you use an “Intent to use” application. And still more fees if you can’t file your “Statement of Use” on time.

The fee for our help is $149, $499, $999 or $4,999 depending on how much work you do yourself and how much work you want us to do for you.

What’s a filing fee?

The Trademark Office charges a fee for filing an application and for filing other stuff, too. The fee to file the application is either $275 or $225 per international class.

If your application is rejected, the Trademark Office does NOT refund your filing fee. We really can’t say this enough.

I just got a phone call/email/letter/telegram from someone saying that I need to pay more money. Do I have to pay it?

You don’t have to pay it. There are scammers out there who contact everyone who files an application with very official sounding words asking for additional cash. Don’t pay them anything. Once you’re our client, we’ll tell you whenever you have to pay Trademark Office fees.

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Trademark Legalese

What’s an “international class”?

There are 45 classes of goods and services and every trademark is registered under one or more of these classes. The classes do not group goods and services the way anyone would normally group things. For example, Class 20 includes. “Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.”

You can see it’s not grouped the way we act as consumers. We tend to think of goods being grouped the way they’re marketed: Home improvement products are in one store; groceries in another; clothes in another. No one has ever set out to do their weekend shopping by going to the store that sells “goods of wood, cork, reed, cane, wicker, horn, born, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum (what is that anyway?) and substitutes for these materials.”

Knowing which class to use, and knowing how to get the most coverage while minimizing the number of classes, is a bit of an art. And minimizing the number of classes IS important, because the fees the Trademark Office charges are based on how many international classes you’re in.

What do that little TM and SM symbol mean?

TM stands for “trademark” and SM stands for “servicemark.” A servicemark is the same as a trademark, but for services instead of products. On this website, we usually use “trademark” to refer to both servicemarks and trademarks.

When you have only common law rights to your trademark and no registration, you should use TM or SM. Once you have a registration, you should use ®.

What’s an “office action”?

An examiner at the Trademark Office will review your application to make sure it meets all the requirements for issuing a registration. If the examiner believes there’s a reason not to register your trademark, or finds any other problems with your application, she’ll send you a write up of the problems. That write up is called an “office action.” You’ll have to respond to the office action, addressing each of the examiner’s concerns. If you don’t respond to all of the issues, or you don’t respond in a way that convinces the examiner, the examiner will issue a final refusal. You can appeal that final refusal, but if you don’t, your application will be dead and your filing fees will be gone.

What does “merely descriptive” mean?

The Trademark Office can refuse to register a trademark that’s “merely descriptive.” For example, if we tried to register Transparent as a brand for windows, the Trademark Office would reject our application because “transparent” is a word that describes an inherent feature of windows.

But, if we could show that Transparent had acquired distinctiveness, then the Trademark Office would grant us a registration.

What’s “acquired distinctiveness”? How do you prove a trademark has acquired distinctiveness?

Acquired distinctiveness means that you’ve become the only source of goods or services using a descriptive phrase. There are several ways to prove a trademark has acquired distinctiveness. For example, if you were trying to prove that Transparent had acquired distinctiveness as a trademark for windows, you’d need to claim that you don’t know of anyone else using it or challenging your claim to exclusive use and:

  • Provide proof that you’ve been selling windows under that brand for at least 5 years; and/or
  • Submit the results of a survey of people who are potential customers for windows (home builders, purchasing agents for home improvement stores, maybe homeowners) that shows they associate “Transparent” with your particular windows and not with windows in general; and/or
  • Submit evidence of having spent lots of money to promote the trademark.

What do you mean when you say “use in commerce”?

“Commerce” is short for “interstate commerce.” Basically, you have to be using the trademark to sell your goods or services in some state other than the one where you’re located. The limitation has to be there because the United States government is a government of limited powers, so in order to have anything to do with trademarks, it has to be able to hang its hat on its power to regulate interstate commerce.

How can I know if my trademark is confusingly similar to someone else’s trademark?

It’s hard. It takes some time. It takes some patience. We provide instructions on how to do it as part of our services, or you can hire us to do it for you. At its most basic, it means that a consumer who hears your trademark (knowing what you sell or do) will think that it came from a different company because that other company owns a trademark that’s the same or similar to yours and sells or does stuff that is the same or similar to the stuff you sell or do. We go into this at length on our website after you have your search results.

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Awesome Trademarks

What are your favorite trademarks?

Our favorite trademark ever is Staples®;. It’s perfect. It’s clever and tells you just what to expect without being descriptive. Other favorites are Amazon®;, Google®; and Apple®;. All of those belong to companies that started out doing one thing and ended up doing lots of things and their trademarks didn’t hold them back the way a more descriptive mark would have done. We are also really keen on sound marks, like the bwwwwwooonnggg an Apple®; computer makes when you turn it on, or the D'oh®; that Homer Simpson says. Seriously, this kind of stuff gives us goose bumps. We dream about this stuff.

What’s genericide?

Genericide is when a trademark becomes the generic word for a product or service. It sounds like that would be great, but it means that the trademark owner loses all rights to exclusive use. It’s like having your warehouse, with all its inventory, suddenly disappear. Yikes!!! All that value. Gone. Here are some trademarks that have suffered genericide:

  • zipper
  • aspirin (still a trademark outside the United States)
  • escalator
  • linoleum
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