Professional Fees for Trademarks

1. Introduction

All trademark applicants in Australia have to pay the official fees charged by IP Australia. In addition, those that decide to use trademark professionals (trademark attorneys or IP lawyers) to help them with the process, also have to pay fees to those specialists. As professional fees can costs thousands of dollars, it’s important to understand how you’ll be charged.

In this post, we explain the ins and outs of professional fees for trademark registrations, and give you some questions to ask before engaging an IP Lawyer or Trademark Attorney to act on your behalf.

2. Understanding the work involved in registering trademarks

The work that an IP Lawyer or Trademark Attorney usually does in trademark registrations can be divided into three parts:

• preparing and filing the trademark application
• responding to “reports” containing objections issued by trademark examiners, and
• responding to “oppositions” by other traders.

Based on their experience, trademark professionals can predict how long it will take them to prepare and file a standard trademark application, and so they’ll usually give you a fixed quote for doing that. Easy.

As explained in other posts, trademark examinations can take a number of different paths, and it’s very difficult to predict for certain what will happen to any given trademark application.

More often than not, the trademark applications that we file are accepted without objection and registered without opposition – there will be no prosecution work. However in some cases, prosecution work ranging from 20 to 30 minutes to several days of work could be involved. By way of example, work might involve spending:

• 20 or 30 minutes to correct a minor formality in the application
• three or four hours drafting a formal legal response to an examiner’s report (and there may be more than one such report)
• six to eight hours compiling evidence of use and preparing an accompanying statutory declaration, or
• days preparing for and then attending opposition hearings.

3. Charging fixed costs for trademark prosecutions?

Although it seems to be more common in the US and the UK than in Australia, there are practitioners who charge fixed costs for trademark prosecutions as well as trademark applications. We know that clients in general – and small business owners in particular – appreciate the certainty of fixed cost services when they’re budgeting for their legal costs.

We considered going down this route at Magnum IP, but ultimately we decided against it because (in our humble view) someone eventually loses out: either the client or the service provider. If the service provider doesn’t anticipate an objection or opposition that actually eventuates, he or she is stuck with the choice of making no money for his or her time, or (what’s worse) not spending the proper amount of effort into doing the work that’s required. Also, if the service provider charges one fee to all clients, inevitably clients who have straightforward registrations end up paying more than they’d otherwise have to.

4. Things to think about for time-based charges

Most trademark professionals charge on a time basis for prosecution work. Therefore, as you’ll have realised by now, the up-front charges are only part of the story. Before choosing someone to help you with you trademarks, we recommend the following:

• make sure you know the hourly rate charged for trademark prosecution work. An hourly rate of $500 or $600 will usually result in much larger prosecution fees than someone who charges $250.
• ask whether your trademark is likely to receive objections from the trademark examiner, and if so, what sort of objections
• ask for an indication of how much that person usually charges for responding to the likely objections
• make sure you’ve had a full trademark search done before proceeding with a trademark application. This way you’ll understand whether you’re likely to get an opposition from another trader before your trademark is registered

Professional trademarking costs can spiral out of control quickly if you haven’t asked the right questions before you start. You’ll minimise the risk of nasty surprises if you have a good idea about the things mentioned above.