A trademark ‘in use’ is cheaper to register than one you ‘intend to use’ 3

Registering a trademark that you are already using is 3 to 4 times less expensive than registering a trademark that you are intending to use down the road.  How can this be?  The answer is that a trademark that is already in use has a fewer fees.  A trademark that is being registered for future use has more fee payments and is called an ITU (intent to use) trademark.   The extra fees associated with an ITU application can easily add up to over $1,000.  After a trademark application for an ITU is filed, additional documents must be filed every six months accompanied by a $150 fee per class of goods and services.   These six month extensions (which are available for a max of 3 years) are required until the ITU starts being used in commerce.  Then once the ITU starts being used, additional paperwork (a Statement of Use) must be filed along with an additional $100 fee.

Since an ITU can cost so much more, it’s a good idea to take a close look at your business plan to determine if you are better off filing for trademark registration after you have started using your mark.  Often ITU registrations are filed when a business idea is being pitched to potential business investors and there is a risk that the trademark could be stolen along with the business idea in the early stages of developing and financing the business.  If you are financing your own business and there is a low risk of your idea being stolen… then waiting to file your trademark once it is being used in commerce (with the goods and services being sold by your business) could be a good idea.

A Signature Seals the Deal (Get agreements SIGNED!) Reply

pencilsFar too often, the fun creative vibe that moves artists and musicians to collaborate on brilliant work… overlooks the need to have the terms of the deal put into writing and signed.  GET IT SIGNED FOLKS!

If you are writing music together and agree to split the royalties 50/50 –write it down, date and sign it!  If you are a freelancer submitting sketches to a toy producer – write down a few simple terms as to who owns unused submissions, date and sign it!  Similarly, if your business is membership driven – write down your membership terms, date and have members sign it!

Even if the agreement seems obvious and understood by everyone involved, take 5 minutes to write it down, date and sign it!

Just last week, news came out that a renowned art and decorating extravaganza that takes place annually in NYC and makes over $1 million …was postponed by 6 months because the organizers never signed an agreement guaranteeing them to use the designated show space.   Consequently, the show space was sold out from under them and they were back to square one.  They thought they had a deal… but they didn’t, because it wasn’t signed.  Keep this from happening to you.  Get a signature to seal the deal!!

Downside to registering your Trademark yourself (without a lawyer) Reply

The two largest obstacles to filing a trademark registration without a lawyer are: 1) automatic notices to other trademark holders that are generated when a new trademark application is filed and 2) an almost unavoidable ‘office action response’ which is a much more detailed legal document that the USPTO often requires after reviewing a trademark application. More…