OCV Public Handbook/©️Legal/1️⃣File for Trademark Protection

File for Trademark Protection

A trademark protects your brand and intellectual property so others can’t steal your company’s name and/or symbols. When you’re working hard and investing capital to build up brand recognization, it’s important to protect your company’s name, logo, slogans, etc. to deter copycats.
Note: There’s a legal distinction between “Trademark” and “Trade Name”. See details here. Also, a business can have both a legal (registered corporate name) as well as a DBA (”doing business as”) name. It’s important to file for trademark protection on the customer-facing name under which you conduct business.

Typical timeline

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Entity Formation

Preliminary Knock-Out Search (Note: depending on launch date expectations, OCV team may skip an official knockout search with Legal counsel)

Company Launch

“Day 1”: File for U.S. Trademark Protection with USPTO through the legal team; review process may take 6-9 months in total (3-6 months after confirmation of receipt from the USPTO, which can take months after application date).
Legal cost estimates as of February 2024:
  1. Comprehensive Search & Filing: ~$7,500
  1. Knockout Search & Filing: ~$5,000
  1. Filing Only: $2,500
Within 6 Months of U.S. Application Date: File for non-U.S. Trademark Protection

European Region Options

  1. Madrid Protocol: covers up to 128 countries (including EU) under a single application and one set of fees. Turnaround time tends to be quicker than separate national registrations, but approval is dependent on the underlying U.S. filing for the first 5 years. For instance, if the U.S. application were to come under attack by a 3rd party or abandoned, foreign filings could be impacted.
    1. Legal cost estimate for EU & UK registrations: ~$5,500
  1. Separate (EU and UK) applications prepared by local counsel. Individual applications tend to take longer, but registrations are independent of U.S. filing status.
    1. Legal cost estimate for EU & UK registrations: ~$10,000 assuming no major obstacles
Depending on the nature and customer base of the business, companies may also consider expanding trademark protection to other regions / countries. Additional countries will incur higher legal fees than estimates above.

Recommendations for OCV companies

  1. Work with the legal team to file for U.S. trademark protection as soon as practical after company launch. OCV will assist with this process.
  1. Work with the legal team to file for EU and UK protection through the Madrid Protocol within 6 months of U.S. application date. Consider other countries if applicable.

Registration challenges

Trademark laws can be complex. What might seem superficially like distinct business names may not meet the standards for trademark registration under the USPTO’s standards. When the USPTO provisionally refuses registration of a mark (for reasons like potential confusion with another registered mark or sound a-likes, being too descriptive about what the company does, or being too broadly generic), legal resolutions may include:
  1. Submitting legal arguments against the decision. Legal costs could be around $5,000 to $7,000, depending on the case. Attorneys should be able to provide an estimated probability of success.
  1. Abandon the current application and either re-file for a revised set of goods and services (trademark category), or in a design format which may improve the prospects for registration.
When faced with registration challenges, we recommend a quick consult with the legal team to access the probability of success regarding legal options above.
In a lot of situations, the most pragmatic solution may be to abandon the current application while continuing to use the company mark and adding “TM” to assert your claims to the name. Afterwards, it may be reasonable to revisit a new application for trademark protection again following a Series Seed or A financing and once a CEO / Head of Marketing is onboard.

Additional Resources