Obtaining a Potentially Valuable Business

On January 17, 2015, the United States Patent and Trademark Office (“USPTO”) implemented a new fee schedule, lowering the cost of certain trademark fees and introducing a new “Reduced Fee” trademark application form. The revised schedule decreased some application types by $50 per mark per class, and reduced trademark renewal fees by $100. Although various considerations will dictate the application form utilized, an in-use trademark using a description of goods from a pre-published list may now require paying the USPTO a filing fee of as little as $225 to obtain a registration.

The rulemaking stemmed from the Leahy-Smith America Invents Act signed into law in September 2011, which significantly overhauled aspects of the patent system. The USPTO anticipates that, by lowering rates for electronic forms filed through its online system, more people will be persuaded to abandon paper forms, the processing of which requires additional time and money associated with clerical tasks, such as scanning.

Reduced trademark fees are expected to “make filing for individuals and smaller entities more accessible.” The savings are compounded when companies file for multiple trademarks (e.g., a logo and a name) across different “classes.” Trademark protection is grouped by class, with each of 45 international trademark classes defining different goods and services. For example, clothing for humans generally falls into class 25; dog apparel into class 18. Each class carries a separate trademark application fee. Thus, an applicant filing for two design (logo) marks in two classes per mark would pay four USPTO trademark fees, or, at a minimum, $900. This is still $200 less than those applications would have cost prior to the new fee schedule’s implementation.

Although obtaining federal trademark registrations can be a significant financial investment, having a trademark strategy can prove extremely valuable depending on the particular business. In a world where apps can help us build websites with little-to-no software coding knowledge and “plug and play” 3-D printers are now available and affordable, the ability to copy someone else’s otherwise unprotectable business idea is easier than ever. A strong name can help a business capture market share versus others selling the same or similar products, which may not be patentable or, in a media-driven business, the underlying content is not copyrightable or is easily emulated without impermissible copying. The brand name (trademark) or the look of a product (“trade dress”)—to the extent they are recognized by the public—may be the most valuable asset a business owns.

– Lauren Sims

lsims@www.dgddev.com

(805) 659-6800 ext. 234

 

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