The following answer common questions about the services Marks Matter offers, together with general information about trademarks and the process of registration. It is not legal advice that creates an attorney-client relationship. Marks Matter can provide specific advice about YOUR mark only when you retain it for legal services by signing up here.
Is Marks Matter a real law practice?
Yes. Marks Matter is a solo law practice whose principal attorney is licensed in California. Marks Matter is based in Cupertino—best known for a small hometown brand, Apple Inc.
What does Marks Matter do?
Marks Matter is dedicated exclusively to trademark prosecution. That is, this law practice helps individuals and businesses secure their rights in their brand through trademark registration with the United States Patent and Trademark Office (USPTO).
Why should I register my trademark?
Rights. Rights. Rights. Registering your mark with the USPTO provides you with nationwide rights in your brand. These rights deter would-be competitors from sponging off your brand’s hard-earned reputation, and make it easier to stop infringers (and get damages) in court. Without such a registered mark, you will have to prove many facts to a court, including that your mark is valid and when you started using it–a much more costly, stressful, and time-consuming affair than filing a trademark application with the USPTO!
I bought a domain name. That means I have a trademark, right?
No, not by itself. Dreaming up the perfect brand name and reserving a corresponding web domain is a great first step, but it does not confer you with trademark rights. Instead, the law protects trademark rights based on your use of the mark in commerce.
Why should I register through Marks Matter?
Marks Matter can save you both time and money. Unlike the many deceptively low-cost online legal services out there, Marks Matter is an actual law practice where an actual attorney focused on this unique area of law assists you.
Many low-cost online legal services rely on a “file and forget” model that provides insufficient help, and can cause delay by repeatedly forcing you to start the registration process over. Through Marks Matter, you avoid such unnecessary delays because a lawyer properly guides your brand through the USPTO’s confusing registration process. Meanwhile, because of lower overhead and tailored flat fee models, Marks Matter can charge a fraction of what large full-service firms do and achieve the same or better results.
How does your trademark filing process work?
You start by filling out the online questionnaire here. Based on the options you’ve selected, Marks Matter will begin to research your proposed trademark. This process includes a conflict check for potential confusingly similar marks already registered with the USPTO, as well as a general search for confusingly similar unregistered marks that may have superior rights.
After that, you’ll receive an opinion on whether or not your mark can be registered with the USPTO. This process typically takes up to a week. If you choose to proceed, then Marks Matter will file a trademark application on your behalf. At that point, it’s a waiting game for the USPTO’s examiners to review the application.
How often should I expect to hear from you? Do I get updates?
Marks Matter aims to provide an opinion response to your initial request within a week. If you provide the go-ahead to file your application and pay the appropriate fee, you’ll receive a receipt once the application has been filed. That process usually takes two weeks. If you need faster service, please include that information in the online sign-up form and pay the additional fee.
Marks Matter will inform you each time a significant action occurs in your application process. Default communication will occur by email as it has proven to be the most efficient for this type of legal service.
How long does the entire trademark registration process take?
From initial application to final grant (or denial), a typical registration process lasts from 8 to 12 months, with an initial response from the USPTO at about month 5.
If I fill out your form, will you need other documents from me?
Not usually. The form is designed to be user-friendly and comprehensive. A copy of a logo will be necessary if you are choosing to register one. At some point, the USPTO will also require an example of your mark being used in commerce. In most cases, a link to a website for where your product or service can be purchased will suffice.
What forms of payment do you accept?
Marks Matter accepts major credit cards (Visa, MasterCard, American Express, Discover, etc.). If you need to make different payment arrangements, please inquire with firstname.lastname@example.org
Which package is right for me?
Each package that Marks Matter offers was designed with a different business in mind. Protect Yours BRONZE was built to offer a formal conflict check and legal opinion on the availability of a specific brand for a particular class of goods or services. It does not initiate a trademark registration process before the USPTO. Branding professionals or people thinking about starting a business would find this option especially helpful. Clients who choose Protect Yours BRONZE can always retain Marks Matter later to file an actual trademark application.
Protect Yours SILVER was designed as a lowest cost registration option for businesses that have been in operation for some time and are therefore less likely to see negative office actions from the USPTO or opposition filings from competitors. While an attorney will handle routine (non-substantive) requests for information from the USPTO for clients who purchase Protect Yours SILVER, you will have to separately purchase attorney time if the USPTO requires a substantive response (i.e. a legal brief explaining why the USPTO should grant your trademark). Because these services require attorney research and writing time, Marks Matter will charge an hourly rate for such services at $300 per hour, billed at 6-minute (1/10th hour) intervals. If you’re concerned about action from the USPTO or have a NEW trademark, then you may wish to consider purchasing Protect Yours GOLD instead, which offers these services at a substantially discounted flat fee.
Protect Yours GOLD is Marks Matter’s best-value package. Instead of paying for conflict checks piecemeal, or running the risk paying full-service rates for responding to negative office actions, this package allows you to buy attorney time at an up-front discount.
Are there any other fees or costs I should know about?
Per the Engagement and Fee Agreement, none of the Protect Yours packages cover litigation of opposition proceedings. These are instances in which another party files an action with the USPTO to oppose the registration of your mark. As part of Marks Matter’s conflict check and registration analysis, the legal opinion you receive will advise as to the likelihood of such opposition. This advice will allow you to make a better-informed decision about how to proceed. Oppositions do happen but are uncommon, especially in light of a proper conflict analysis. If your mark IS opposed, Marks Matter will bill at the hourly rate of $300 per hour (billed in 6-minute increments) to litigate the issue. Marks Matter generally advises its clients to avoid attempting to register a mark it believes is likely to be opposed.
Sometimes, the USPTO regards an example of the use of your mark in commerce as defective. At others, it may be necessary (for tactical or procedural reasons) to file your application based on your intent to use the mark, as opposed to basing it on actual use. The USPTO requires smaller fees to make these filings, and Marks Matter will bill you separately for them. Marks Matter makes best efforts to avoid such filings, both to contain costs for clients and to speed the grant of their marks.
I tried to register my trademark and got a letter from the USPTO. Can you help me?
In many cases, yes. Please send an email to email@example.com. Include the following and we’ll work together to figure out how Marks Matter can help solve your trademark problem:
- Your name and business name (where applicable)
- A description of what goods or services you or your company sought to trademark
- Your trademark serial number (where applicable)
- The title of or a copy of the letter you received from the USPTO or a competitor (where applicable)
- A brief description of what concerns you and what you’d like to accomplish
If the USPTO grants my trademark, do I get a certificate?
The USPTO does offer formal certificates for an additional fee if you want one. It is not necessary in order to assert trademark rights. Grant of a federal trademark also allows the owner to use the ® symbol behind the mark. This symbol puts would-be infringers on notice that you have a registered mark.
I’m not a US citizen, but my business sells in the United States. Can I still register a trademark?
Yes. Both foreign nationals and foreign business organizations may file trademark applications in the United States provided that they offer their goods or services for sale in the United States.