The Trademark Registration Process
Here's how I guide clients through trademark registration:
- Initial Consultation: We'll discuss your brand, how you use it, and whether trademark registration makes sense. This can be done by phone or Zoom at your convenience.
- Trademark Search: I conduct a comprehensive search of the USPTO database and other sources to identify potential conflicts with existing trademarks.
- Class Selection: The USPTO requires you to identify the specific goods or services your trademark covers. I'll help you select the appropriate class(es).
- Application Preparation: I prepare your trademark application, including the mark description, specimen, and goods/services description.
- Filing with USPTO: I file your application electronically with the United States Patent and Trademark Office.
- Monitoring & Response: After filing, the USPTO examines your application. If there are issues, I'll work with you to respond and address examiner concerns.
- Registration: Once approved, your trademark is published for opposition. If no one opposes, a use-based application proceeds to registration (roughly 10 to 12 months from filing if everything goes smoothly); an intent-to-use application receives a Notice of Allowance and registers after a Statement of Use is accepted.
Common Trademark Questions
How much does it cost to register a trademark?
At the Law Office of John R. Nelson, trademark registration is a flat fee of $1,600, which includes a consultation, a comprehensive search, class selection, application preparation and filing, and the $350 USPTO base filing fee for one class.
Is the initial consultation free?
No. The initial consultation is $50 for 20 minutes, always credited toward your flat fee. You get a scheduled call with me to talk through your mark.
What's the difference between ™ and ®?
The ™ symbol can be used by anyone claiming trademark rights, even without registration. It simply indicates you're using the mark as a trademark. The ® symbol, however, can ONLY be used after your trademark is officially registered with the USPTO. Using the ® symbol before registration is improper and can hurt your application or your ability to enforce the mark.
How long does trademark registration take?
The entire process typically takes roughly 10 to 12 months from filing to registration if everything goes smoothly, though it can take longer if the USPTO issues office actions requiring responses or if someone opposes your application.
How long does trademark protection last?
A registered trademark lasts 10 years and can be renewed indefinitely as long as you continue using the mark in commerce. Between years 5 and 6, you must file a Declaration of Use to maintain the registration.
Can I trademark a name that's already in use?
It depends. Protection depends on whether consumers are likely to be confused, not on the class number. A similar mark for related goods or services can block registration even in a different class. Two businesses can sometimes use the same or similar name if they operate in completely different industries and there's no likelihood of consumer confusion. However, if a similar trademark already exists for related goods or services, registration will likely be denied.
What is a trademark class?
The USPTO divides trademarks into 45 classes based on the type of goods or services offered. For example, Class 25 covers clothing, Class 9 covers electronics, and Class 35 covers retail services. The flat fee covers one class; additional classes are quoted separately.
Do I need to use my trademark before filing?
You can file based on either (1) actual use—you're already using the mark in commerce, or (2) intent to use—you plan to use the mark in the future but haven't started yet. Intent-to-use applications require additional steps and fees once you begin using the mark, but they allow you to secure your filing date early.
What if someone opposes my trademark?
After your trademark is approved by the USPTO examiner, it's published in the Official Gazette for 30 days. During this time, third parties can oppose your registration if they believe it infringes on their rights. Opposition proceedings are relatively rare. If it happens, we'll discuss your options, which may include negotiating a settlement, modifying your mark, or defending the application.
Can I trademark a logo and a name separately?
Yes. Many businesses register both a word mark (the name) and a design mark (the logo) as separate trademarks. Each requires a separate application and fee.
What is not included in the $1,600 flat fee?
The $1,600 flat fee includes a consultation, a comprehensive search, class selection, application preparation and filing, and the $350 USPTO base filing fee for one class. Additional classes, substantive Office Action responses, Statements of Use, and oppositions are quoted separately, in writing, before any work begins, so you are not paying for them up front and you decide whether to proceed. If you want those numbers early, ask during the consultation — it is a fair question and I will answer it before you hire me. Call (386) 256-8537.
What happens if the USPTO issues an Office Action on my application?
An Office Action is a letter from the examining attorney identifying a problem with your application — anything from a technical fix to a refusal based on a conflicting mark. It is common and it is not the end of your application. You normally have three months to respond, extendable. Minor technical issues are usually handled as part of the filing. A substantive refusal requires a written legal argument, which I quote separately before doing the work. A thorough search up front is the main reason applications avoid the serious kind of refusal.
Do I need a Florida attorney to register a trademark?
Trademark registration is federal, so any U.S.-licensed attorney can file for a client in any state — you do not need a Florida attorney because you live in Florida. (The USPTO does require applicants domiciled outside the United States to be represented by a U.S.-licensed attorney.) What working with a local Florida attorney gets you is someone reachable in your own time zone who also understands Florida business filings, fictitious names, and common-law rights that a national filing service will not look at.
How is hiring a trademark attorney different from using an online filing service?
Many online filing services are document-preparation companies, not law firms. They can put a form in front of the USPTO, but they cannot advise you on whether your mark is registrable, interpret a search result, tell you which class actually covers your goods, or represent you when the examining attorney pushes back. Those are exactly the points where trademark applications succeed or fail. When you hire me, a licensed Florida attorney does the search, chooses the class, drafts the application, and stays on the file through examination.
What can't be trademarked?
The USPTO will refuse registration for marks that are:
- Merely descriptive of the goods/services
- Generic terms (e.g., you can't trademark "Computer" for computers)
- Confusingly similar to an existing registered trademark
- Deceptive or misleading
- Names of living persons without their consent
Why Choose the Law Office of John R. Nelson for Trademark Services?
- Transparent Flat Fee: $1,600 for a one-class application, including the $350 USPTO base filing fee—no hourly billing, and nothing beyond it without a quote you approve first.
- Phone/Zoom Convenience: No need to travel to an office. We handle everything remotely.
- Nationwide Service: I work with clients throughout the United States.
- Direct Attorney Service: You work with me personally, not paralegals or staff.
- Clear Communication: I explain the process in plain English and keep you informed every step of the way.
Trademark Attorney Serving New Smyrna Beach & Volusia County
The Law Office of John R. Nelson, P.A. is located at 318 Palmetto Street in New Smyrna Beach, Florida. Trademark registration is federal, so I file for clients anywhere in the United States — but a large share of the brands I register belong to businesses right here in Volusia County: New Smyrna Beach, Edgewater, Port Orange, Daytona Beach, Ormond Beach, and DeLand, plus Flagler County and the greater Orlando corridor.
If you are searching for a trademark attorney near you in Volusia County, what you get here is a licensed Florida attorney who is local, reachable, and works on one flat fee. Consultations are held by phone or Zoom so you are not driving across the county for a twenty-minute conversation, and you deal with me directly at every step rather than an intake queue.
Florida brands also carry an issue national filing services routinely miss: a mark can be clear at the USPTO and still collide with an established local business that never registered federally, or with a fictitious name already on file with the Florida Division of Corporations. My search covers those state and common-law sources, not just the federal database. If it turns up a conflict, we talk through it before anything is filed — whether the other mark is close enough to matter, whether a narrower description of goods clears it, or whether you are better off adjusting the mark now instead of losing a filing fee later. That conversation is part of the flat fee, not an add-on.
Law Office of John R. Nelson, P.A.
318 Palmetto Street, New Smyrna Beach, FL 32168
Phone: (386) 256-8537
Trademark & Intellectual Property Resources
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