FAQs

Trademark FAQs

Do you offer a free consultation?
McHale & Slavin attorneys offer up to an hour of time to discuss your application needs, free of charge. If more time is needed at the time that the meeting is set, the firm will request a minimal fee for each additional hour that is needed.


I want to file a trademark application, how much does it cost?
It really depends on how many classifications you wish to protect and how the application is to be filed. The Government charges $275 for each classification that the mark will protect. McHale & Slavin charges a fixed attorney fee in the amount of $675 to prepare and file a trademark application up to two classes. For each additional class (3 or more) the firm charges an additional $150 for each classification.

The filing basis is also a cost consideration. There are two ways that an application can be filed, either “Actual Use” or “Intent to Use”. “Intent to Use” applications typically cost a little bit more because of additional US Trademark Office filing requirements.

We will provide quotes as further actions are required in order to obtain a federal trademark registration. Please contact us directly and we will be happy to provide you with McHale & Slavin’s Schedule of Fees.


What is a “classification”? How much does each class cost?
The US Trademark Office uses the International Nice Classification System, which has a total of 45 numbered classes, to organize goods and services; classes 1-34 cover goods, and classes 35-45 cover services. This organizes goods and services into classes to create a system that enables searching for potentially conflicting registered/pending marks. For example, class 025 covers clothing, class 014 covers jewelry and Class 035 covers retail store services. The Government charges $275 for each classification.


Is a Trademark search necessary?
No, it is not necessary, but we highly recommend that you have a comprehensive search conducted before filing an application. Our search and opinion offers you the ability to learn whether the mark is likely to register, in advance of filing the trademark application. However, the US Trademark Office will conduct its own search of the mark once the application is filed and later assigned to an Examiner. 


Do you conduct your own trademark searches, or do you outsource trademark searches?
We do both, however, we typically conduct our own in-house comprehensive trademark search. This includes a search of the US Trademark Office records, which will alert an applicant to existing applications or registrations which might hinder their ability to successfully register a trademark, prior to applying for a registration.


How much are your fees for conducting a trademark search and providing an informal opinion?
Our search fees include the actual printed search-results along with a comprehensive opinion letter explaining the results of the search with advice regarding the registrability of the trademark.

McHale & Slavin charges a fixed fee in the amount of $535 to conduct a comprehensive search with the US Trademark Office and Google, and provide you with an opinion as to whether a trademark, if filed with the US Trademark Office, would succeed. 


What is the difference between “use in commerce” and “intent to use” in commerce?
The difference between these two filing bases is whether you presently use the mark in interstate commerce on all the goods and services you wish to protect. If you have use in commerce, you may file on an “Actual Use” basis. If you do not have present use in commerce, but intend to use it in the future, you must file the application as “Intent to Use”.  An “Intent to Use” application will require filing an additional form and fee.


How long does it take to obtain a U.S. Trademark Registration?
It depends upon the filing particulars of an application, however, it typically takes 12-15 months from the date of filing to obtain a federal trademark registration, barring any complications with the application during the examination process.


I want to file a Trademark application in another country. Does a U.S. Trademark Application protect the mark in other parts of the world?
No. McHale & Slavin is able to provide trademark services in most countries of the world. We have a network of foreign associate attorneys, most of whom we are regularly engaged with us in cooperative work matters. The foreign associates have separate fees they charge for trademark work in their respective countries, and the respective countries charge their own individual filing fees.

McHale & Slavin charges a fixed-fee of $875 for preliminary involvement in foreign trademark filings.  We will provide further quotes as further actions are required to obtain a foreign trademark registration. Please feel free to call our offices directly and we will be happy to schedule a conference call to discuss your foreign applications further.


I want to sell my products on Amazon. They are requiring a Registration number in order for me to post my products. What do I need to do?
You need to obtain a federal trademark registration from the US Trademark Office.

Feel free to call our offices directly and we will be happy to assist you with the trademark application process.


I filed a trademark application with another trademark company and have now received a communication from the US Trademark Office.  I don’t know how to respond to it. Can you help, and how much will it cost?
Such communication from the Trademark Office is called an Office Action. Failure to respond will result in abandonment of your trademark application. Companies like LegalZoom and Trademarkia.com cannot provide legal advice. Therefore, if a response to the Office Action requires legal argument, trademark owners find that they need to seek legal assistance from an experienced trademark attorney.  If the Office Action is not fatal, often times the issues can be corrected or the Examining Attorneys objections can be overcome in order for the application to move on to the next stage in the process.

Our firm charges a fixed fee in the amount of $200 to take over a pending application with the US Trademark Office. Once we are Attorney of Record on the application with the US Trademark Office, we can complete the response to an Office Action. Typically, these matters are billed at an hourly rate of $375 per hour. Our attorneys will review the Office Action and provide you with an estimate of how much time would be incurred to prepare and file an appropriate response.

Please feel free to call our offices directly and we will be happy to schedule a conference call to discuss your application further.


Once my Trademark is registered, is there anything that I have to do to maintain it?
Yes. The US Trademark Office requires ongoing maintenance of your trademark registration. It requires renewal filings for all registrations to remain active. The Government charges specific filing fees for each type of renewal.

Please feel free to call our offices directly and we will be happy to provide you with McHale & Slavin’s  Schedule of Fees pertaining to filing registration renewals.


Does your firm maintain and monitor trademark registrations?
Yes. Trademark applications and/or registrations involve critical dates and deadlines. McHale & Slavin maintains an elaborate critical dates database for all of our participating clients and, if the client so desires, McHale & Slavin will continue to accept responsibility for maintaining all critical dates regarding your trademark registration.  We mail and email timely reminders as deadlines come due so that a critical deadline is not missed – at no cost to you!

If you are not yet a client with this firm but have active trademark registrations that need monitoring for critical filing deadlines, we will be pleased to monitor your company’s trademark portfolio.  Our fees are typically standard fixed-fees; in this case we charge $200 to take over each existing registration. This fee includes the preparation and filing of the Power of Attorney appointing McHale & Slavin, P.A. attorney of record with the US Trademark Office, and for the entry of the registrations in our critical dates database for continued monitoring services for your IP needs.  We do not charge any fee for correspondence reminders concerning critical filing dates pertaining to your registrations. 


Can I use the “TM” or “SM” or the ® symbol?
You may only use the federal registration symbol “®” (or otherwise portray federal registration) after the US Trademark Office issues the registration for a mark, but not while an application is pending. It can only be used on, or in connection with, the goods or the services listed in the federal trademark registration. If the registration is not maintained or if the Registration expires, ® cannot be used. 

You may use the “tm” designation to put the world on notice that you are using the mark as a source identifier for the goods or services connected with the mark.  (“sm” signifies a service mark where the mark identifies the source of a service as opposed to goods.) These designations inform the public of your claim to a “common-law” right in the mark, based on actual use.  No registration is necessary to use a “tm” or “sm”, as these symbols put others on notice that you claim rights in the mark, although common law doesn’t give you all the rights and benefits of a federal registration.


I need to transfer ownership of my trademark registration to a new company. How do I do this and how much does it cost?
Trademark ownership can be transferred by filing a Trademark Assignment for recordation with the US Trademark Office Assignment Branch.

The Government filing fee for assignment of one trademark is $40 for the first mark, and $25 for each additional mark, plus McHale & Slavin’s attorney fee of $250. Our attorney fee includes counseling the client regarding the transfers of ownership, preparation of the Trademark Assignment and filing with the US Trademark Assignment Branch.


Someone is using my trademark. What can I do to make them stop?
There are various remedies available under the Federal Lanham Act for unlawful use of both registered and unregistered trademarks.  This can include unlawful use of one’s mark in another’s domain name. McHale & Slavin is highly experienced in protecting trademark rights in all tribunals having jurisdiction over trademark disputes.  


Copyright FAQs

I want to file a copyright application.  What do you need from me, and how much does it cost?
McHale & Slavin files everything electronically. Therefore, we will need a high-resolution finished version of completed visual works in .pdf format. We will gather all information for filing the copyright application for submission to the US Library of Congress, which examines copyright applications and issues registrations.

McHale & Slavin charges a fixed attorney fee, which includes counseling our clients regarding the copyright application, preparation of the application and deposit materials, and filing with the US Copyright Office.  The Government filing fee, per application, is $55 and McHale & Slavin’s service fee is $500 per application.

Please feel free to call our offices directly and we will be happy to schedule a conference call to discuss your application further.


How long does it take to receive a Copyright Registration once filed?
The time the Copyright Office requires to process an application varies. We typically receive the Original Registration Certificate 6-10 months after it has been filed with the Copyright Office. However, the Effective Registration Date is the date of filing the application, regardless of when the Registration is actually issued. In cases requiring expedited issuance of the copyright registration, it can be obtained in approximately one week, thought a significant additional government fee is required for such quick acquisition.


How long does a Copyright Registration last?
In the case where the author of the work is the same individual claiming the copyright, the registration will be in good standing for a term enduring for the author(s) life plus an additional 70 years after the last surviving author’s death. No further action is required to maintain a registration once registered.


I need to transfer ownership of my Copyright Registration to a new company.  How do I do this, and how much does it cost?
Copyright ownership can be transferred by filing a Copyright Assignment for recordation with the US Copyright Office Assignment Branch.  McHale & Slavin has fixed attorney fees concerning the Copyright Assignment process.

For a Copyright Assignment: Government filing fee of $105 for up to 10 titles, plus McHale & Slavin’s attorney fee of $250, which includes the counseling the client regarding the transfers of ownership, preparation of the Copyright Assignment, and filing with the US Copyright Office.


Someone has copied my website. It is identical to mine and I did not give any permission for anyone to use it! What can I do to have them take it down?
If you are in possession of a copyright registration for your website, we can help.  McHale & Slavin has an established litigation practice with attorneys experienced in complex litigation pertaining to all areas of intellectual property, including copyright litigation.

If you do not have a copyright registration for your website and another party is copying your website, you will need to obtain a copyright registration before seeking legal remedies provided by the Copyright Act.  However, if you take the steps to obtain a copyright registration of your website now, you will be in a much better position to demand a take-down of an infringing site at the onset of any future infringing occurrence.

Please feel free to call our offices directly and we will be happy to schedule a conference call or meeting to discuss your copyright needs further.