Frequently Asked Questions

No, federal trademark registration is not required. But there are a lot of reasons why you should. (See below!)

Federal trademark registration helps you better protect your business and your brand. Trademark registration gives you a lot of benefits and legal rights that you wouldn’t otherwise have: it puts the public on notice that you are claiming ownership of your trademark, you get a legal presumption of national ownership of the trademark, and you get the exclusive right to use your trademark in connection with your business’s products and/or services, just to name a few. 

Brand Bombshell is a one-time fee of $2,900.00 or six monthly payments of $549.00. This includes the USPTO’s filing fee for one class of goods or services (typically $250). 

Simply put: you get what you pay for. Many discount or DIY legal websites will offer to file your trademark application for just a couple hundred bucks. But if you have questions or need any help after the application is filed, you’re gonna have to pay more. Some services will tout that they’ll respond to office actions for no additional fee. However, if you read the fine print, that only includes non-substantive office actions. The vast majority of trademark applications will receive at least one substantive office action. You can bet your a$$ they’ll be charging you more for that. 

Brand Bombshell includes the USPTO’s filing fee for one class of goods or services. If you want to include more than one class, there will be additional filing fees. Filing fees generally range from $250-$350 per class. 

There are a few more situations where additional filing fees may show up. If your application is filed on a 1B Intent-to-Use basis, you will need to file a Statement of Use roughly six months after the application is filed, or you can request a six-month extension to file the Statement of Use. The USPTO charges a filing fee of $125 per class for the Statement of Use, and $100 per class for the extension request. 

We will discuss the appropriate class(es) for your trademark application (keeping your budget and business goals in mind) and the additional filing fees that may apply during our initial Strategy Session so you know exactly what to expect. 

• Initial strategy session. We will talk about your trademark and your business, figure out the appropriate class(es) of goods/services for the application, discuss the trademark process and any additional fees that may come up, and answer all of your questions about trademarks. If your business is still in development and/or you are rebranding and still trying to decide on a trademark, we can also advise you on how to create a strong and distinctive trademark.
• Comprehensive clearance search. We will perform an extensive clearance search to determine if your trademark is available for use and registration in the US.  If your first trademark choice is not available, we will search for up to two more trademarks.
• Prepare and file your trademark application. 
• USPTO application filing fee for one class. 
• Responding to all substantive and non-substantive office actions.
• All email and phone communications. Curious about the status of your application? Not sure if you should start using the ® symbol yet? Give us a call or shoot us an email. It’s included.
• Trademark status updates. We will let you know when there is an update or development with your application. 
• Forward trademark certificate to you.
• Trademark guide with info and tips on how to maintain and protect your registered trademark.

Sometimes additional USPTO filing fees will arise, which are not already included in the Brand Bombshell price. We will talk about this during the initial Strategy Session so you know what to expect.

Although rare, issues will occasionally come up during the registration process which are outside the scope of the trademark registration. For example, a third party may oppose your trademark registration. Or, despite our best efforts, the USPTO may issue a final refusal to your trademark registration. Opposition proceedings and trademark appeals are handled by the Trademark Trial and Appeal Board, and TTAB proceedings are outside the scope of the trademark registration. 

Many trademark registration services will include a “direct hit” search. This means they’re typing your exact trademark into the USPTO’s database to search for an exact match. This just isn’t good enough. Slight variations to your trademark won’t show up in that search, but they will impact your chances of trademark registration. Just because your exact trademark doesn’t show up in the search does not mean that it’s available for registration.

Our comprehensive search will look for different variations of your trademark in the USPTO database and across relevant websites and social media platforms. We’ll then analyze the search results, which helps us determine the likelihood of success and predict what, if any, pushback or objections we might receive from the USPTO.

The trademark application process typically takes around 8-12 months, start to finish, but it can take years depending on the circumstances. The timeline depends on lots of factors: how quickly you can provide us information needed for the trademark application and other forms, the filing basis (1A or 1B) of the trademark application, and whether or not the USPTO issues Office Actions.

It varies. But the process typically goes something like:

1. Trademark application is filed
2. After about three months, the USPTO will assign an examining attorney to your application
3. About a month later, we will receive notice if the examining attorney has issued an Office Action
4. If an Office Action is issued, we will have six months to respond
5. Once the Office Action is resolved, the examining attorney will issue a Notice of Allowance (for 1B applications only)
6. We will then have six months to file a Statement of Use or request a six-month extension (for 1B applications only)
7. About 1-2 months later, the examining attorney will issue a Notice of Publication notifying us that the trademark application has been approved for publication
8. The trademark is published for a 30-day opposition period
9. If nobody opposes the trademark, the USPTO will register the mark and send the registration certificate within 2-3 months from the publication date.

An Office Action is a letter from the Examining Attorney assigned to your application which identifies any issues or problems with your application. Some Office Actions are easy and somewhat routine–we call these “non-substantive” Office Actions. These are typically requests for clarification, minor amendments to the application, or requests for disclaimers. Some Office Actions, on the other hand, can be pretty complex–we call these “substantive” Office Actions. These are commonly issued because the Examining Attorney has found a registered or pending trademark that is likely to be confused with yours. Responding to substantive Office Actions typically requires a lot of legal research and writing, mixed with some strategy and a little finesse.  

In either event, the first Office Action issued is non-final, and the USPTO provides up to six months to file a response addressing each issue raised in the Office Action. All Office Action responses are included in Brand Bombshell, at no additional cost.

The USPTO will not register a trademark unless/until it is actually being used in commerce with the goods and services stated on the trademark application.

We’ve got two options when filing a trademark application:

1. it can be filed on a 1A Actual Use basis, meaning that you are actively using the mark in commerce at the time the application is filed, or 
2. it can be filed a 1B Intent to Use basis, meaning that you are not using the mark yet, but you have a bona fide intent to do so in the near future.

In a nutshell, a trademark is being “used” in commerce when you are actively marketing and selling your goods or services. For goods, “use” is when the trademark is placed on the goods, on the packaging, on store displays, etc. For services, “use” is when the trademark is shown or displayed in connection with the sale of the services.

Generally, a 1A Actual Use application is filed for existing businesses, products, and services. A 1B Intent to Use application is typically used for businesses, products, and services that are still being developed and haven’t been “put out there” yet.

The trademark registration process is almost identical for 1A and 1B applications, with one notable exception. With 1A, you must include a specimen with the application. The specimen needs to show and demonstrate to the Examining Attorney how the trademark is being used in connection with the goods/services. With 1B, no specimen is filed with the application. Instead, the Examining Attorney will issue a Notice of Allowance once he or she has determined that the trademark is eligible for registration. You’ll then have six months to file a Statement of Use showing that you are now using the mark in commerce, or to request a six-month extension. You can request up to four additional extensions after that. 

The ® symbol is reserved exclusively for federally registered trademarks. (The “R” means “registered”.) You can’t use that symbol with your trademark unless/until it is actually registered.

The TM (or SM) symbol, on the otherhand, can be used with both registered and unregistered trademarks. Placing the TM symbol next to your business’s name or logo helps to assert your existing trademark rights while your trademark application is pending. 

Absolutely! Brand Bombshell is a great option if you’re just starting a business or rebranding your existing business. In those instances, we like to use the initial Strategy Session to bounce ideas around and help you develop a strong a distinctive trademark. 

Unfortunately, we cannot guarantee that your trademark will ultimately be registered. Although we will take every step to significantly increase the chances of registration, there are always thing that can come up that we just can’t predict. 

A trademark registration can last indefinitely if you continue to use the mark in commerce and file the USPTO’s required maintenance forms. You must file a Affidavit of Use five years after registration, then again four years later, then every ten years after that in order to keep the trademark registration active. 

The USPTO charges filing fees when you file the required maintenance forms. Currently, the filing fee is $125 per class to file the Affidavit of Use (due 5 years after registration), and $425 per class to file a combined Affidavit of Use and Application for Renewal (due every 10 years following registration).