Fixed-Fee Intellectual Property Services
Last Updated: January 26, 2021
Knowing how much your business might spend to obtain, protect, and maintain your intellectual property can help you effectively manage your resources. We are pleased to provide fixed fees for certain trademark and patent services so you can gain meaningful insight into these costs.
We know that other law firms offer fixed-fee services, and you might be tempted to focus your attention solely on a firm’s table of fees when deciding whom to contact. But fees are difficult to compare on an apples-to-apples basis. If you have reviewed who we are, you understand that our IP practice is focused on providing you with services that strategically align with your business goals. We do not want simply to prepare and file applications; instead, we want to help you make meaningful decisions about how to best protect your IP assets; we want to help you use your IP assets to tackle business challenges; we want to help you cultivate your IP assets as powerful tools to help build a thriving business.
If you are a foreign company or foreign law firm, you can rest assured that we will handle your matters professionally and competently. Importantly, our fees for filing applications and processing/docketing include all communications and reporting. If the USPTO issues an office action, we will provide you with a brief analysis to help your decision-making process.
SRH Law is pleased to provide fixed fees for many of our trademark and patent services to help you gain meaningful insight into the costs associated with protecting these IP assets. Please note that some trademark and patent services involve varying levels of complexity that can be assessed only on a case-by-case basis, and thus cannot be offered on a fixed-fee basis.
To help you understand the steps involved and the costs that may be incurred in pursuing a trademark, below is a Trademark Registration Overview addressing the process for selecting a trademark and registering it with the U.S. Patent and Trademark Office (USPTO). The Trademark Services Fixed Fees Table following the Overview provides the fee structure for those trademark services that we offer on a fixed-fee basis. Our Patent Services Fixed Fees Table provides the fee structure for the patent services that we offer on a fixed-fee basis.
If you have questions or would like additional information, please feel free to contact us at ip@srhlaw.com or (802) 860-1003.
TRADEMARK REGISTRATION OVERVIEW
(* Denotes Services for Which Dunkiel Saunders Offers Fixed Fees)
Pre-Application Searches:
To use or register a trademark for use with goods/services in the U.S., the mark must be available, and pre-application searches help you assess a mark’s availability. SRH Law offers two types of searches:
- A Knockout Search* is a preliminary online search for trademark availability and includes an informal written assessment.
- A Clearance Search* is a more comprehensive search that includes analysis of a 3rd party search report and a formal written opinion.
Applications:
The USPTO offers two types of trademark applications: actual use and intent-to-use. You also may seek international protection for a U.S. mark as well as U.S. protection for an international mark. In some instances, you might want to pursue state registration.
- An Actual Use Application* is used for a trademark that is being used in commerce.
- An Intent-to-Use (ITU) Application* is used for a trademark that is not yet being used in commerce (where you have a good faith intention to use the mark in commerce). Although you can file an ITU application prior to using the mark in commerce, the USPTO will not allow a trademark to register until it is used in commerce. You will need to make additional filing(s) to demonstrate this use, including:
- Allegation or Statement of Use (SOU):* This filing informs the USPTO of use of the mark in commerce.
- Request of Extension of Time for SOU:* If you are not using the mark in commerce at the time of filing the SOU, you may request up to five, 6-month extensions.
- A Divisional Trademark Application* is used if you want to divide an application. For instance, you may want an ITU application to proceed to registration with certain goods/services that you are using in commerce while retaining an active ITU application for the other goods/services.
- An Application Based on Foreign Trademark* is used if you hold an international trademark registration and want to request extension of protection in the U.S.
- A Madrid Protocol Application (International Registration)* can be used if you have a USPTO application or registration and you want to seek protection of the mark in any countries that are party to the Madrid Protocol. You can use one application for multiple countries.
- You may want to pursue State Registration of a trademark under certain circumstances, such as if you use the trademark only within one state or if federal registration is not available based on current federal law. Because state laws vary, we are unable to provide fixed fees. Please contact SRH Law for estimated fee information.
Examination:
After the trademark application is filed, the USPTO assesses whether the application meets the minimum filing requirements. Once those requirements are met, a USPTO examining attorney examines the application to determine whether it complies with applicable rules and statutes. If there are any objections to the application, the examining attorney will issue an Office Action. If there are no objections to registration, or if you overcome any objections, the examining attorney will approve the mark for publication. Once the mark is published, third parties are able to oppose the registration. If no opposition is filed, or if any opposition is unsuccessful, the application proceeds to the next stage of the registration process: for an actual use application, the USPTO will register the mark; for an ITU application, the USPTO will issue a notice of allowance, and when the applicant timely satisfies the statement of use requirements, the USPTO will register the mark.
- Post-Application Processing and Docketing:* Dunkiel Saunders processes post-application notifications and communications from the USPTO, dockets deadlines, and provides you with updates and reminders in advance of deadlines.
- Office Actions: If the examining attorney issues an Office Action, you will have six months to respond. Because SRH Law does not know whether there will be an Office Action for any given application or what a response would entail, we are unable to provide fixed fees for these services. If your application receives an Office Action, at your request SRH Law will provide estimated fee information at that time.
Registration and Maintenance:
Obtaining a USPTO trademark registration provides you with meaningful trademark rights. To prevent a registration from expiring, you will need to file periodic maintenance documents:
- Registration Processing and Docketing:* Once the USPTO issues a trademark registration, SRH Law processes the original certificate, dockets maintenance deadlines, and provides you with email reminders in advance of the deadlines.
- Initial Renewal:* To maintain a trademark registration, you must file initial renewal documents by the 6-year anniversary of the registration:
- §8 Declaration of Use/ Excusable Nonuse (or §71 Affidavit):* To maintain a trademark registration, you must either be using the mark in commerce with the goods/services or not be using the mark based on special circumstances that excuse the nonuse.
- Combined Filing: §8 Declaration (or §71 Affidavit) and §15 Declaration of Incontestability:* In addition to the §8 Declaration, you also can file a §15 Declaration of Incontestability if you own a trademark on the Principal Register and have made continuous use of the mark for 5 years after registration. Once a trademark is incontestable, many aspects of the registration cannot be challenged by third parties.
- Regular Renewal:* To maintain your registration after the Initial Renewal, you must file renewal documents by every 10-year anniversary of the registration.
- Combined Filing: §8 Declaration (or §71 Affidavit) and §9 Renewal:* To maintain a trademark registration, you must either be using the mark in commerce with the goods/services in the registration or not be using the mark based on special circumstances that excuse the nonuse. You also must file renewal documents.
- Optional Post-Registration Filing:* If you did not file a §15 Declaration of Incontestability during Initial Renewal, you can do so at a later time if you own a trademark on the Principal Register and have made continuous use of the mark for 5 years after registration. Once a trademark is incontestable, many aspects of the registration cannot be challenged by third parties.
Other Trademark Services:
Trademark Assignment:* If you transfer ownership or change your name on a registration or use application, you will need to file a trademark assignment with the USPTO.
U.S. Customs Recordation:* U.S. Customs & Border Patrol (CBP) monitors imports to prevent importation of goods bearing infringing marks that are recorded with CBP. You may record registered trademarks with CBP to help prevent importation of goods that infringe registered marks.
TRADEMARK SERVICES FIXED FEES
Last Updated: January 2, 2021
Notes (i – iv) are explained at end of Table
| SERVICE | DUNKIEL SAUNDERS FEESi | 2021 3rd PARTY FEESii |
|---|---|---|
PRE-APPLICATION SEARCHES | ||
| Knockout Search | $500 for 1 class $200/add’l class | |
| Clearance Search | $1600-2000 | Search Report: Approx. $500-750 |
| APPLICATIONSiii | ||
| Actual Use Application | $700 for 1 class $250/add’l class | USPTO Fees: $250 to $350/class |
| Intent-to-Use (ITU) Application | $400 | USPTO Fees: $250 to $350/class |
| • ITU App: Allegation / Statement of Use (SOU) | $400 for 1 class $250/add’l class | USPTO Fees: $100/class |
| • ITU App: Request for Extension of Time for SOU | $200/request | USPTO Fees: $125/class |
| Divisional Trademark Application | $350 | USPTO Fees: $100 |
| Application Based on Foreign Trademark (§66(a)) | $600 | USPTO Fees: $500/class |
| Madrid Protocol Application (International Registration) | $750 | USPTO Fees: $100-150/class Int’l Fees: Vary iv |
| EXAMINATION | ||
| Post-Application Processing, Docketing | $200 | |
| Office Action Response | TBD | |
| REGISTRATION AND MAINTENANCE | ||
| Registration Processing and Docketing | $200 | |
| Initial Renewal (6-year Anniversary of Registration): | ||
| • §8 Declaration of Use/ Excusable Nonuse (or §71 Affidavit) | $600 for 1 class $250/add’l class | USPTO Fees: $225/class |
| • Combined Filing: §8 Declaration (or §71 Affidavit) and §15 Declaration of Incontestability | $700 for 1 class $300/add’l class | USPTO Fees: $425/class |
| • Request to delete goods/services per class after §8 or §71 declaration, but before accepted | $400 | USPTO Fees: $250/class |
| Renewal (Every 10-Year Anniversary of Registration): | ||
| • Combined Filing: §8 Declaration (or §71 Affidavit) and §9 Renewal | $700 for 1 class $300/add’l class | USPTO Fees: $525/class |
Optional Post-Registration Filing: | ||
| • §15 Declaration of Incontestability | $600 for 1 class $250/add’l class | USPTO Fees: $200/class |
| OTHER SERVICES | ||
| U.S. Customs Recordation | $150 | CBP Fees: $190/class |
| Trademark Assignment | $200 | USPTO Fees: $40 |
| Grace Period Late Fees | USPTO Fees: $100 | |
i SRH Law’ Fees are provided as of the “Last Updated” date. We reserve the right to adjust Fees if there are extenuating circumstances. SRH Law’ Fees do not include Third Party Fees.
ii Third Party Fees may be subject to adjustment.
iii The Application section does not include applications for collective or certification marks. Please contact SRH Law for estimated fee information.
iv International registration fees vary based on the number of classes, designated countries, and other factors. The WIPO website provides a schedule of international fees and a fee calculator.
PATENT SERVICES FIXED FEES
Last Updated: September 23, 2020
Notes (i – iii) are explained at end of Table
The chart below shows the Patent fixed fee services that SRH Law offers and how the USPTO increases will affect them.
| SERVICEi | DUNKIEL SAUNDERS FEES | Official Fees 2020 (Small Entity) | Official Fees 2021 (Small Entity) |
|---|---|---|---|
| Initial consultation and project assessment | No charge | N/A | N/A |
| File U.S. utility application based upon prior filed foreign filing (excludes translation fees; includes filing of foreign priority document) | $700 | $785 | $830 |
| U.S. Utility Application filing (specification, figures, and claims prepared by client) | $650 | $785 | $830 |
| File U.S. National Stage application in the USPTO (excludes translation fees) | $650 | $785ii | $830 |
| Initiate entrance into National Stage in foreign country | $750 | Depends on Country | Depends on Country |
| Initiate filing of U.S. design application based upon prior foreign filing (excl. translation fees or drawing revisions; includes filing foreign priority claim) | $550 | $480 | $510 |
| Prepare and file original U.S. design application (excludes drawings) | $1200 | $480 | $510 |
| U.S. design patent (specification, figures, and claims prepared by client) | $500 | $480 | $510 |
| Initiate filing of corresponding foreign design patent application (excludes any additional/revised drawings needed; includes filing foreign priority document) | $550 | Depends on Country | Depends on Country |
| Prepare and file issue fee | $250 | $500 Utility $350 Design | $600 Utility $370 Design |
| Payment of 3½ year maintenance fee | $275 | $800 | $1,000 |
| Payment of 7½ year maintenance fee | $275 | $1800 | $1,880 |
| Payment of 11½ year maintenance fee | $275 | $3700 | $3,850 |
| Docket, analyze, and forward Office Action | $50 | None | None |
| Prepare budget estimate for responding to Office Action | None | None | None |
| Prepare Patent Assignment and Record with USPTO | $100iii | None | None |
iThe Official Fees shown are for applicants that qualify for small entity status. In general, fees are double for applicants that are large entities and half for applicants that qualify for micro entity status. Official fees are subject to change.
iiThis fee may vary depending on the circumstances of the PCT application from which the National Stage application is based.
iii If an assignment needs to be made or changed after the filing date, additional charges will apply.
