Legal Question in Technology Law in California

Re: trademark

Yes. )It is not required, but you need a service mark registration. If you do not you are at risk of having your domain name put on hold to any third party that has or obtains a registration for your domain name.)

Current average pendency is about 2 years from filing to registration (9-12 months of which is the current backlog of the US Pat. & TM Off. prior to issuing a first official action on new TM/SM apps.) The prior post of 12 month pendency is incorrect. The prior post is too general on cost. The official filing fee is $245/class. Typical attorney fees are $250-$500 for one class, $75-$200 per additional class. If there are objections from the USPTO expect another $300-600 legal fees to try to overcome the objections.

Call or email if you want more information or assistance. My firm does about 300 new TM or SM applications per year, and many recent ones are for internet start-ups. We are a large St. Louis general practice firm, so we have legal expertise in many other areas new start-ups must face (such as corporate organization, financing, tax considerations, regulatory submissions, etc.)

Bruce Burdick

314-342-8029

www.burdlaw.com

www.armstrongteasdale.com

Re: trademark

There is no requirement that you register your mark with the U.S. government. There are certain advantages if you do register, however.

First, registration makes it easier to sue people who violate your trademark rights. Note that you have trademark rights even if you do not register; you only need use a mark in commerce to acquire some rights in the mark.

But a "common law" mark (as they are known) is weaker than a registered mark. If you got into a dispute with someone who took the time to register, you would probably lose.

Registration may also give legitimacy to your choice of business name. For example, if your domain name were "supercuts.com" and you were selling industrial strength sheers to metal fabrication operations, you could probably get a registration notwithstanding the hair salon by the same (or similar) name. Registration of your mark in a different area of commerce would go a long way toward showing the court that you are entitled to keep the domain name.

In my experience, registration of a single mark takes about a year and costs about $1000. Every case is different, of course, so those are estimates.