What is the cost for an office action response by a US attorney?

08 May, 2024
Nyall Engfield

The cost of responding to a trademark office action with arguments and evidence by an attorney in the United States can vary depending on several factors. However, a reasonable price range for such services would typically fall between $500 to $2,000 or more.

Here are some reasons why the cost can vary:

Attorney's experience and reputation: Attorneys with more experience and a well-established reputation in intellectual property law tend to charge higher fees compared to those who are relatively new or less experienced in the field.
Complexity of the case: If the office action raises complex legal issues or requires extensive research and preparation of arguments, the attorney may charge a higher fee to account for the additional time and effort required.
Extent of evidence and documentation: If the response requires gathering and submitting substantial evidence, such as evidence of use, specimens, or other supporting documentation, the attorney's fees may increase due to the additional work involved.
Location and overhead costs: Attorneys practicing in major metropolitan areas or cities with a higher cost of living may charge higher fees to cover their overhead expenses, such as office rent and staff salaries.
Firm size and resources: Larger law firms with more resources and support staff may have higher billing rates compared to smaller firms or solo practitioners.
Hourly rates or flat fees: Some attorneys charge an hourly rate for their services, while others may offer flat fees for specific tasks like office action responses. Hourly rates can range from $200 to $600 or more per hour, depending on the factors mentioned above.

As a general guideline, a comprehensive and well-reasoned trademark office action response prepared by an experienced attorney in a major city could cost between $1,000 and $2,000 or more, depending on the complexity of the case and the attorney's specific billing practices.

It's important to discuss the expected costs with the attorney upfront and obtain a detailed fee estimate or agreement before engaging their services. This will help ensure transparency and avoid any surprises regarding the legal fees involved.

Here is an example Schedule of Fees for a mid-sized law firm.

Trademark Services Fee Schedule (Mid-Priced Firm)

Initial Consultation
- Free to $150: Brief consultation to discuss needs and strategy. May include a status check.
Trademark Search
- $300 to $600: Comprehensive search of federal, state, and common law trademarks to assess potential conflicts and registration viability.
Filing Trademark Application
- $800 to $1,200 per mark: Preparation and filing of a trademark application. Government fees are additional and vary depending on the type of application and whether it's filed electronically or on paper.
Responding to Office Actions
- $300 to $1,200: Handling official communications from the trademark office, typically regarding issues with the application. Complex responses or substantive legal issues will be at the higher end of this range.
Statement of Use Filing
- $250 to $500: Filing a statement of use for an "intent-to-use" application, excluding government fees.
Trademark Monitoring
- $150 to $500 per year: Monitoring services to watch for potentially infringing new trademark filings.
Trademark Renewal
- $500 to $700: Handling the renewal of a trademark registration, excluding government fees.
Opposition Proceedings
- $2,000 to $5,000+: Fees for filing or defending an opposition to a trademark application before the Trademark Trial and Appeal Board. This does not include litigation costs which can be substantially higher.
Additional Services
- Hourly Rates: $200 to $400: For additional legal services not covered above, such as litigation, licensing, or negotiation assistance.

Notes:

The government filing fees are not included in the above costs and will vary based on the type of trademark application and the number of classes of goods/services listed.
Some firms may offer flat-rate packages for some services, which can provide some savings.
It's important to discuss all potential fees and services in detail with your trademark attorney to understand exactly what services you need and what the fees will be.

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