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Intellectual Property Audit
So your business has successfully registered its trademark(s) with the U.S. Patent and Trademark Office (USPTO). Congratulations! But did you know this is only the beginning? Not only do businesses have to maintain the trademark registration, but they also have to actively use and protect the mark.
What needs to be done to maintain my business’s trademarks?
In order to maintain a trademark, a business or nonprofit must:
Renewing Your Trademarks
Trademark registrations must be renewed with the USPTO by certain deadlines:
Failing to file the renewal on time will result in your trademark being canceled. And if you cannot show that your business is using the trademark, then you will now be able to file the required documents.
A Note of Caution: Because trademark registrations are public records, you are likely to receive a fraudulent notice to renew your trademark before the actual deadline. These notices often look like they're from a government office, but they are not actually coming from the USPTO. Once you pay these scammers the “filing fee,” they simply disappear with your money.
Monitoring Your Trademarks
Contrary to popular belief, the USPTO does not police your trademark for you. Their role is limited to preventing new applications for confusingly similar trademarks. This means the USPTO won’t catch any businesses that use a similar name, logo or slogan if that business never tries to register a trademark. These businesses could be infringing upon your trademark rights, and if you aren’t monitoring your trademark, you won’t know until you start losing customers and clients to the infringer. And if you allow the infringement to continue (whether you knew about it or not), you could lose your rights in the trademark.
Be Careful With Licensing Agreements
Businesses can also lose their trademark rights if they engage in a practice known as “naked licensing.” Any time you enter into a business deal that allows another entity to use your trademarks, you must adequately control and supervise how your trademark is being used. This situation might arise in joint ventures, marketing or distribution deals, and other licensing arrangements. In any of these situations, it is extremely important to have well drafted agreements in place to protect your trademark rights and maintain control over how your trademarks are used.
Trademark Monitoring Service: $1850/yr or $175/mo per mark
Includes annual IP audit and initial Cease & Desist Letter to suspected infringers. Further pursuit of a trademark infringement dispute will require a retainer of $2,750.
5-Year Trademark Filings: $425 per mark
(Section 8 Declaration of Use and Section 15 Declaration of Incontestability)
+ $425 minimum USPTO Fees per class
10-Year Trademark Filings: $525 per mark
(Section 8 Declaration of Use and Section 9 Renewal)
+ $525 minimum USPTO Fees per class
Customs and Border Protection Registration: $400 per registration number +$190 CBP Registration Fee (per registration number and per class of goods for trademark registrations)
IP Licensing Agreement: $3,925
Add HIPPA Business Associates Agreement: +$1,000
Trademark Assignment Agreement and Recording: $550 + $40 USPTO Fee / $25 Secretary of State Fee