US TRADEMARK
by Bill Stemp

Regarding the trademarking process, we would need to conduct a trademark search in the US to see if your trademark has been registered or applied for. The cost for this is $475.00 plus GST per trademark.

The initial cost for a US trademark application is $1,900.00 plus GST plus $350.00 USD (this fee is based on filing for one class of product or service). Again the application is examined and if the US Trademarks Office opposes your application then we would need to file a Response which can range from $700.00 to $800.00.

There is a chance that we could receive more than one Examination Report resulting in more fees being due. If the application is approved after this then it will proceed to be advertised in an official Gazette which gives anyone in the public a chance to oppose your trademark if they wish. If nobody does then your application will be allowed and we are required to pay final fees of $650.00 plus GST plus agent’s fee of $200.00 USD per class plus a government fee of $150.00 USD per class. After the final fees are paid then your trademark would be fully registered.

In the event that we are required to request a 6 month extension to complete the registration of the trademark application from the Patent and Trademark Office, there will be additional legal fees payable to our office of $450.00 plus GST plus agent’s fees of $100.00 USD plus Trademarks Office cost of $125.00 USD per class. We are allowed a maximum of 5 such requests.

Please note that before we can complete a US trademark application, you must use your trademark whether it is a phonetic mark or a design mark, in commerce meaning you must be providing your service or selling your product in the United States using your trademark, which must be clearly displayed. If your application is allowed before you begin using your trademark in the United States, we must request a six-month extension of time to file what is called a Statement of Use. These types of extensions can be requested a maximum of 5 times.

Note there are 2 types of trademarks, phonetic and visual. A phonetic trademark protects the sound of the alphanumeric characters spoken out loud. Therefore 7-Up is the same as SEVEN UP, since it is the sound of the trademarks which is being registered and secured against any competitors. Similarly, the number 5 and the word FIVE are the same trademark.

With a visual design, also known as a logo, it is the appearance of the design which is protected. The design could include or not include alphanumeric characters. An example of design which does not include alphanumeric characters is the Shell logo. An example of one which does include such characters is the Esso logo.

If you have a visual design or logo, both the logo and the phonetic trademark need to be secured by filing applications in the Trademarks Offices in the countries where you wish to sell your products or provide your services. For example, if you plan to promote your trademark or your business in the US, we need to file in Canada and US. If you want to secure your trademark overseas we need to do searches and applications in the countries in which you plan to do business.

Successfully filing to register your trademark whether it be a phonetic trademark meaning the sound of the words, letters, numbers, graphic design or logo, is the only way to protect the trademark in the US. Incorporating your business will not protect the name of the business at all. Your trademark will be registered for 10 years and your registration can be renewed every 10 years for an unlimited number of terms. So long as you continuously use your trademarks and make sure that you renew their registration, they will never expire. Having a registered trademark puts you in the position of being able to control who is allowed to use your trademark anywhere in the US since this is Federal jurisdiction. You can license your trademark to any number of licensees that you wish. If you are buying or selling a franchise, the most important asset of the franchise are the registered trademarks owned by the franchisor.

Not registering your trademarks leaves you in jeopardy of having anyone else use your trademarks without your knowledge or consent, thereby diminishing the value of your trademarks. It could also result in your losing the right to use your trademarks by virtue of someone else registering the trademarks and owning them and then being in a position to demand that you change the name of your business to something that is quite different from what it has been up until then. Imagine the damage to your business if after 5 or 10 years of using your trademarks you are forced to stop using them and change your name, signage, marketing materials and even your phone number.

You want to protect your good name and reputation or the name and reputation that you may have already worked very hard to create and to build up. Federally trademarking your name plus any graphic designs, logos or slogans is the only means to do this. You have worked very hard to create a good reputation; why let someone ruin it? Worse yet, why permit someone else to take your name, use it without your consent and to even go so far as to register it as their trademark? You can imagine the damage to your reputation in business of that were to occur.

Please note that if you have a trademark or trademarks for which your company is the applicant and the company will own the trademarks, it is very important to make sure that the company which owns the trademarks has as little debt as possible. If the company is put into receivership or bankruptcy, you will lose the trademarks because the receiver or bankruptcy trustee as the case may be is required to sell all of the assets including the trademarks.

Stemp & Company
1670, 734 – 7th Avenue SW
Calgary, Alberta T2P 3P8
Bill Stemp
403-777-1125 bill@stemp.com