FAQ

A patent is the property right granted to an inventor by the Government of the United States of America, through the US Patent and Trademark Office (USPTO), "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time, in exchange for disclosure of the invention to the public when the patent application is published (at eighteen (18) months after filing of a "nonprovisional" application).

Inventors may apply for one of two types of [utility] patent applications: (1) A "nonprovisional" application, which begins the examination process and may lead to a patent and (2) A "provisional" application, which establishes a filing date but does not begin the examination process; think of the latter as a bookmark to establish your rights in time.

The average patent application pendency is about 20 months, although this may differ according to subject matter involved. Applications received in the USPTO are numbered in sequential order and the applicant will be informed within eight weeks of the application number and official filing date if filed in paper. If filed electronically, the application number is available within minutes.

The USPTO's Patent Center platform has a private section that provides a USPTO/Internet infrastructure capability to securely provide patent application status information to USPTO customers with a customer number associated with the correspondence address for their application and the appropriate software tools.

Visit the USPTO's Patent Center information page (https://www.uspto.gov/patents/apply/patent-center) or contact the Electronic Business Center (EBC) at (571)272-4100 to learn more. Patent Center also has a guest access, public section to provide the same information to the public once an application has issued as a patent or published as a patent application publication. Once you receive a patent filing receipt containing the application number of your application, you may check on the status of a pending application.

A patent is intellectual property that may be sold, assigned, or inherited to heirs of a deceased patentee or patent owner. Patent law provides for the transfer or sale of a patent or patent application by means of a legal document called an assignment. A properly executed assignment transfers all rights from the existing owner to another person. When the patent is transferred, the assignee becomes the new owner of the patent and has the same rights as the original owner.

The USPTO records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. For information on filing a patent assignment or documents affecting title, please call the Assignment Recordation Branch at (571)272-3350.

To search patent assignment records online, please use the Patent Assignment Search platform att the following link: https://assignment.uspto.gov/patent/index.html#/patent/search. Assignment information is also available at the Patent and Trademark Resource Centers throughout the United States.

The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of "an international patent", the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries.

When an application is published, the publication will be included on the USPTO home page in the Searchable Patent Databases section at http://www.uspto.gov/patft and information on the published application will be included in the publicly accessible portion of Patent Center at https://patentcenter.uspto.gov.

ELO offers up to half an hour of time to discuss your application needs, free of charge. If more time is needed, at the time a next meeting is set, a minimal fee may be requested for each additional hour.

It really depends on how many classifications you wish to protect and how the application is to be filed. The Government charges $350 for each classification that the mark will protect. ELO usually charges a fixed attorney fee in the amount of $675 to prepare and file a trademark application up to two classes. For each additional class (i.e., 3 or more) the firm charges an additional $200 fee for each classification.

The filing basis is also a cost consideration. There are two ways that an application can be filed, either “Actual Use” or “Intent to Use.” “Intent to Use” applications typically cost a little bit more because of additional US Trademark Office filing requirements.

ELO will provide quotes when further actions are required in order to obtain a federal trademark registration. Please contact the office directly for further information on fees.

The USPTO uses the "International Nice Classification System" which has a total of 45 numbered classes that organize goods and services. Classes 1-34 cover goods, and classes 35-45 cover services. This system enables searching for potentially conflicting registered/pending marks (e.g. class 025 covers clothing, class 014 covers jewelry and Class 035 covers retail store services). The Government charges $350 for each classification.

You may find further information on the Nice system at the following link: https://www.uspto.gov/trademarks/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks.

Although it is not strictly necessary, ELO highly recommends that you have a comprehensive search conducted before filing an application. A search and opinion help to inform you as to the likelihood of whether your mark is likely to register, in advance of filing the trademark application. This could save you considerable funds in the long run. However, the US Trademark Office will conduct its own search of the mark once the application is filed and later assigned to an Examiner.

ELO may do both; however, matters of comprehensive trademark search are typically conducted in-house, and any outside work is thoroughly examined. This includes, but is not limited to, a search of the U.S. Trademark Office records, which will alert an applicant to existing applications or registrations which might hinder their ability to successfully register a trademark, prior to applying for a registration.

ELO charges a fixed $700 fee to conduct a comprehensive search with the U.S. Trademark Office along with various other databases (depending on the mark/market), and provides you with an opinion as to whether a trademark –if filed with the U.S. Trademark Office– would succeed. This includes a full compilation of the search results.

It depends upon the filing particulars of an application. However, it typically takes around 12-15 months from the date of filing to obtain the decision on a federal trademark application, barring any complications during the examination process.

The difference between these two filing bases is whether you presently use the mark in interstate commerce on all the goods and services you wish to protect. If you have use in commerce, you may file on an “Actual Use” basis. If you do not have present use in commerce, but intend to use it in the future, you must file the application as “Intent to Use.” An “Intent to Use” application will require filing an additional form and fee.

A U.S. Trademark application is limited to U.S. territories. However, ELO is able to provide trademark services in most countries around the world through a network of foreign associate attorneys. Keep in mind foreign associates have separate fees they charge for trademark work in their respective countries, and the respective countries charge their own individual filing fees.

ELO charges a fixed-fee of $1,000 for preliminary involvement in foreign trademark filings and will provide further quotes as further actions are required to obtain a foreign trademark registration. Please feel free to contact ELO directly to schedule a conference call and discuss your foreign applications further.

You need to obtain a federal trademark registration from the U.S. Trademark Office. Feel free to contact ELO directly for assistance with the trademark application process.

Such a communication from the Trademark Office is called an Office Action, and failure to respond will result in abandonment of your trademark application. Companies like LegalZoom and Trademarkia cannot provide you with legal advice, generally only with forms. Therefore, if a response to the Office Action requires legal argument, trademark owners find that they need to seek legal assistance from an experienced trademark attorney. If the Office Action is not fatal, often times the issues can be corrected, or the Examiner's objections may be overcome, in order for the application to move on to the next stage in the process.

ELO charges a fixed fee in the amount of $300 to take over a pending application with the U.S. Trademark Office as the Attorney of Record on the application. Typically, these matters are billed at an hourly rate of $300 per hour. ELO will review the Office Action and provide you with an estimate of how much time would be incurred to prepare and file an appropriate response.

Please feel free to call ELO directly and schedule a conference call to discuss your application further!

Yes. The U.S. Trademark Office requires ongoing maintenance of your trademark registration. It requires renewal filings for all registrations to remain active. The Government charges specific filing fees for each type of renewal.

Please feel free to call ELO directly and schedule a conference call to discuss fees pertaining registration renewals.

Yes. Trademark applications and/or registrations involve critical dates and deadlines. ELO maintains an elaborate critical dates database for all participating clients and, if the client so desires, ELO offers the service of maintaining all critical dates regarding your trademark registration for a fee. Timely reminders are sent out as deadlines come due so that critical deadlines are not missed!

If you are not yet a client with this firm but have active trademark registrations that need monitoring for critical filing deadlines, ELO will be pleased to monitor your company’s trademark portfolio. Fees involved are typically standard fixed fees; in this case $400 to take over each existing registration. This fee includes the preparation and filing of the Power of Attorney appointing Andres Escalante, Esq. as the attorney of record with the US Trademark Office, and for the entry of the registrations in the critical dates database for continued monitoring services for your IP needs.

You may only use the federal registration symbol “®” (or otherwise portray federal registration) after the US Trademark Office issues the registration for a mark, but not while an application is pending. It can only be used on, or in connection with, the goods or the services listed in the federal trademark registration. If the registration is not maintained or if the Registration expires, ® cannot be used.

You may use the “tm” designation to put the world on notice that you are using the mark as a source identifier for the goods or services connected with the mark (“sm” signifies a service mark where the mark identifies the source of a service as opposed to goods). These designations inform the public of your claim to a “common-law” right in the mark, based on actual use. No registration is necessary to use a “tm” or “sm”. Be aware however, that common law does not grant you all the rights and benefits of a federal registration.

Trademark ownership can be transferred by filing a Trademark Assignment for recordation with the U.S. Trademark Office Assignment Branch.

The Government filing fee for assignment of one trademark is $40 for the first mark, and $25 for each additional mark, plus ELO’s attorney fee of $300. ELO's attorney fee includes counseling the client regarding the transfers of ownership, preparation of the Trademark Assignment and filing with the U.S. Trademark Assignment Branch.

There are various remedies available under the Federal Lanham Act for unlawful use of both registered and unregistered trademarks. This can include unlawful use of one’s mark in another’s domain name. Feel free to contact ELO directly to further discuss your options!

ELO files everything electronically. Therefore, you will need to provide a high-resolution finished version of completed visual works in .pdf format. ELO will then gather all the necessary information for filing the copyright application for submission to the U.S. Library of Congress, which examines copyright applications and issues registrations.

ELO charges a fixed attorney fee, which includes counseling clients regarding the copyright application, preparation of the application and deposit materials, and filing with the US Copyright Office. The Government filing fee, per application, is $55 and ELO’s service fee is $600 per application.

Please feel free to contact ELO directly to schedule a conference call and discuss your application further!

The time the Copyright Office requires to process an application varies. Typically, the Original Registration Certificate is provided 6-10 months after an application has been filed with the Copyright Office. However, the Effective Registration Date is the date of filing the application, regardless of when the Registration is actually issued. In cases requiring expedited issuance of the copyright registration, it can be obtained in approximately one week, thought a significant additional government fee is required for such quick acquisition.

In the case where the author of the work is the same individual claiming the copyright, the registration will remain in good standing for a term enduring the author(s) life, plus an additional 70 years after the author’s death. In the case of anonymous works, pseudonymous works, or works made for hire, the copyright term is 95 years from the date of first publication or 120 years from creation, whichever comes first. No further action is required to maintain a registration once registered.

Copyright ownership can be transferred by filing a Copyright Assignment for recordation with the U.S. Copyright Office Assignment Branch. ELO has fixed attorney fees concerning the Copyright Assignment process.

For a Copyright Assignment, the Government filing fee is of $105 for up to 10 titles, and ELO’s attorney fee is $300, which includes counseling the client regarding the transfers of ownership, preparation of the Copyright Assignment, and filing with the US Copyright Office.

If you are in possession of a copyright registration for your website, ELO can help.

If you do not have a copyright registration for your website and another party is copying your website, you will need to obtain a copyright registration before seeking legal remedies provided by the Copyright Act. In either case, if you take the steps to obtain a copyright registration of your website now, you will be in a much better position to demand a take-down of an infringing site at the onset of any future infringing occurrence.

Please feel free to contact ELO directly to schedule a conference call and discuss your copyright needs further.