Understanding who should be listed as the applicant of a trademark application in the USPTO is absolutely critical. Naming the wrong applicant is one of the most common errors made by people who choose to file their own trademark applications. The worst part is that you generally don’t even know you made the error until you try to enforce your trademark registration against an alleged infringer and, in response, the infringer files a trademark cancellation against your registration on the basis that it’s void. That’s one nasty surprise you don’t want. The good news is that this mistake is easily avoidable if you spend some time carefully considering which individual or entity should be named as the applicant.
Potential clients frequently ask me whether they should trademark a name and logo together in one application. Well, here’s the answer. If the name of your product/service is distinctive (i.e. a name that’s eligible for registration on the Principal Register and not only on the Supplemental Register), there’s almost no benefit to applying to register your name and logo together. In fact, the only benefit is that you’ll save money by filing one trademark application with the United States Patent and Trademark Office (USPTO) rather than two. But, is saving a few hundred dollars really a good enough reason to seek registration of your name and logo together rather than separately?
The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period. The discovery conference may be conducted between the parties in-person, but it’s almost always done over the phone. Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.
The entire cost of a trademark cancellation can sometimes be minimal and affordable. Other times, it can be ridiculously expensive and prohibitive. Now, you’re probably wondering how that could possibly be the case. Well, the reason is because there are countless factors that greatly impact the cost of pursuing or defending a trademark cancellation. For example:
- Whether you’re the petitioner or the registrant
- Whether you choose to retain an attorney
- Whether the cancellation raises complex or novel issues of law or fact
- The number of grounds for cancellation pleaded by the petitioner
- The amount of effort and time you’re prepared to invest in the cancellation proceeding
- Whether the parties can privately resolve the trademark cancellation and how long it takes to reach a settlement
Although you’re certainly in control of some of these factors, many of them you have little or no control over. And when you don’t have control over the proceeding, the ability to calculate the total cost of a trademark cancellation can quickly become an exercise in futility.
The total cost of a trademark opposition can be anywhere from zero dollars to over $100,000. Yes, I know that’s a huge and scary range, but it’s the honest truth. There are many variables that affect the cost of pursuing or defending a trademark opposition, including:
- Whether you’re the opposer or the defendant
- Whether you hire an attorney or not
- The number and complexity of the issues raised in the opposition
- The amount of time and effort you’re personally willing to put into pursuing/defending the opposition
- The aggressiveness of the parties and/or their attorneys
- Whether the trademark opposition can be amicably and quickly settled between the parties in some manner
As you can see, some of these variables you’ll have control over, whereas others you won’t. And that’s what makes estimating trademark opposition costs so frustrating, difficult, and frankly not very reliable.