Trademark Addendum

These terms supplement the Engagement Agreement and the Standard Engagement Terms:

  1. Scope

The scope of our services for applications for registration of trademarks at the United States Patent and Trademark Office is limited to assisting you with preparing and seeing through an application for registration. Unless you and the Firm otherwise agree in writing, this scope is limited to the following tasks:

  • Running a conflict check;

  • Reviewing the information you submitted;

  • Performing a knockout search, i.e. a preliminary search of the USPTO trademark database for identical or highly similar wording in marks in order to assess the risk of a likelihood of confusion refusal that does not cover design or graphic elements;

  • Advising you on the risk of a likelihood of confusion refusal based on the knockout search;

  • Reviewing your proposed mark and the goods and services;

  • Advising you on the risk of a potential descriptiveness refusal;

  • Advising and proposing alternative descriptions of your goods and services;

  • When appropriate, advising you on what to provide as a specimen of use;

  • Preparing and filing your application for registration;

  • Docketing your application;

  • Updating you on all notices or actions from or by the USPTO or third-parties, analyzing the same, and providing you a recommendation; and

  • Updating you on communications from the USPTO regarding the status of the application.

If an item is not listed above, the Firm will not undertake the task unless you and it otherwise agree in writing.

2. Fees & Costs

You will be charged flat fees for the foregoing services. The Firm’s current flat-fees for these tasks are:

  • Services up to and including preparation and filing of application, per applied for trademark, per International Class: $600 with additional international classes at $100 each;

  • Review of notices or actions from the USPTO or third-parties, initial analysis, and providing recommendation: $200;

  • Updating you on communications from the USPTO regarding the status of the application: $60

  • Preparation and filing of non-substantive office action responses - $300

  • Preparation and filing of statements of use - $250

  • Preparation and filing of extensions of time to file statements of use - $175

  • Renewing trademark registrations, i.e. Sections 8, 9, and 15 filings - $350

  • Preparation of USPTO filings (not assignment agreements) for assignments of trademarks and filing - $200

  • Simple* Notices of Opposition - $500

  • Simple* Notices of Cancellation - $500

  • Simple* Letters of Protest - $400

  • Extensions of time to oppose - $175

Otherwise, the Firm will charge you for its services under its hourly rates as provided in the Standard Engagement Terms with minimum billing of one-half hour per task.

These fees do not include USPTO filing fees, which are out of pocket expenses we will undertake for you and you will be billed for.

3. Your responsibilities

You authorize the Firm to take all steps and actions it determines to be appropriate to complete the foregoing tasks. You will fully and accurately disclose all facts necessary for the Firm to perform those tasks and will advise it on any relevant developments. You will regularly check your email. You understand that the Firm will communicate with you by email and will not have any responsibilities to repeatedly reach out for a response. You agree that if you fail to respond to emails concerning requests for information or deadlines, the Firm will not take any steps on your behalf. This may result in the abandonment of your application.

By providing the Firm with information or materials, you represent, warrant, and understand:

  • You believe you are entitled to use the mark in commerce;

  • To the best of your knowledge, no other entity has the right to use the same or similar mark for the same or similar products or services so that your mark is likely to cause confusion, mistake or to deceive;

  • All information you provide is accurate to your knowledge;

  • Making false statements to the USPTO may be punishable by law and cause trademark filings to be invalidated; and

  • The Firm will rely on what you provide to it.

4. Post-registration

Unless you and the Firm otherwise agree, in writing, the Firm has no duty to monitor your trademark after it is registered. You understand there are deadlines that arise, with the first being between the fifth and sixth year of registration. If not met, you may lose your registration. Unless otherwise agreed, in writing, it is your duty to keep track of these dates.

*Simple as used here is for those filings that the Firm, in its sole discretion, believe can be prepared and filed as part of a holistic monitoring program entered into between you and the Firm. Otherwise, the Firm may apply this flat-rate, in its sole discretion, when effort invested into preparation of such a filing is the same as that necessary in a holistic monitoring program. Otherwise, you will be billed at the Firm’s hourly rates.