ALLIANCE MEMBER SERVICES FOR TRADE MARK REGISTRATION [All information, including fee estimates, are for guidance only. This information is subject to change. Specific instructions on services, fees and timeframes should be sought and confirmed at time of engagement.]
INDEX OF FIRMS (by country) Country Firm Name Page Number Australia Brisbane Thynne & Macartney 1 Australia Melbourne Russell Kennedy 2 Bulgaria Kalaidjiev and Georgiev Law Firm 4 Canada Toronto Torkin Manes LLP 5 Czech Republic Holec, Zuska & Partners 6 Finland Nordic Law Attorneys-at-Law 7 Germany Melchers 8 Hong Kong Boase Cohen & Collins 9 India Advaya Legal 13 Israel Shugol Ketzef Kerner & Co / M Firon & Co 15 Malaysia Raslan Loong 17 Mexico Cornejo, Mendez, Gonzalez y Duarte SC 18 New Zealand McVeagh Fleming 19 Philippines Belo Gozon Elma Parel Asuncion Lucila 20 Poland Izabella Żyglicka and Partners 21 Romania Buzescu CA 22 Spain Marti & Associats 23 Sweden Lindmark Wellinder 24 Switzerland Blum & Grob Attorneys at Law Ltd 25 United Kingdom Jeffrey Green Russell Limited 26 USA Boston Rich May, P.C. 27 USA Chicago Much Shelist, PC 28 USA Denver Moye White LLP 29 USA Grand Rapids Varnum LLP 30 USA Los Angeles Musick Peeler & Garrett, LLP 31 i
Country Firm Name Page Number USA New York Phillips Nizer LLP 32 USA Philadelphia Obermayer Rebmann Maxwell & Hippel LLP 34 USA St Louis Evans & Dixon LLC 35 ii
THYNNE & MACARTNEY Level 27, 12 Creek Street, Brisbane, Queensland, 4000, Australia www.thymac.com.au Rowan Lyndon, Partner Email: rlyndon@thymac.com.au Tel: +61 7 3231 8728 Fax: +61 7 3229 0855 Brian Johnson, Senior Associate Email: bjohnson@thymac.com.au Tel: +61 7 3231 8702 Fax: +61 3229 0855 Christine Hadley, Trade Mark Attorney/Lawyer Email: chadley@thymac.com.au Tel: +61 3231 8898 Fax: +61 3229 0855 We offer a complete brand protection solution, including the following trade mark services: applications; renewals; assignments; licences; and dispute resolution. Assuming an application for registration of a mark as an Australian trade mark is straightforward, we usually fix our professional fees and costs for each stage of the process regardless of how many classes of goods or services may be covered by the application. For example, as a first step, we can conduct availability searches and provide a summary report with our recommendations at a cost of $750 per mark. For all other services, we will provide and agree an estimate of costs before commencing work. All amounts quoted are in Australian dollars and are exclusive of GST (if applicable), which is currently applied at a rate of 10%. 1
RUSSELL KENNEDY Level 12, 469 La Trobe Street, Melbourne, Victoria, 3000 Australia www.rk.com.au Andrew Chalet, Principal Email: achalet@rk.com.au Tel: +61 3 8602 7243 Fax: +61 3 9609 6747 Trade Mark Applications, Registrations and Renewals Trade Mark Advice and Licensing Trade Mark Litigation Stage Pre-filing due diligence (comprising search of trade marks register and letter of advice to client on availability of the trade mark) Preparation and filing of trade mark application (one class) Professional Fees Government Fees Total Fees $800.00 Nil $800.00 $400.00 Nil $400.00 Additional fee per additional class $150.00 Nil $150.00 Application fee Nil $200.00 per class $200.00 per class Preparation and filing of application for expedited examination (optional) (includes preparation of statutory declaration) Reporting on examination outcome and formalities response to Examiner Detailed Advice on Examiner s Report and preparing a substantive response Processing notice of acceptance, payment of registration fee $500.00 Nil $500.00 $500.00 Nil $500.00 Hourly rate Nil Hourly rate $200.00 Nil $200.00 Registration fee Nil $300.00 per class $300.00 per class Processing certificate of registration $200.00 Nil $200.00 2
All amounts are in Australian dollars and are exclusive of GST (if applicable). The hourly rates are as follows:- Hourly rate (excluding GST) Law Clerk $235.00 Law Graduate $225.00 Junior Solicitor $325.00 Solicitor $405.00 Senior Associate $480.00 Principal, Special Adviser, Special Counsel, Consultant $600.00 3
KALAIDJIEV AND GEORGIEV LAW FIRM Bulgaria, 1303 Sofia 84 Aleksandar Stamboliyski, Blv., floor 10, office 54-55 www.kgm-law.com telephone: +35929804021 telephone/fax: +35929880952 Angel Kalaidjiev Managing Partner angel.kalaidjiev@kgm-law.com Radi Georgiev Partner radi.georgiev@kgm-law.com Marina Voynova Lawyer marina.voynova@kgm-law.com Iliyana Mavrodieva Lawyer iliyana.mavrodieva@kgm-law.com - Consultations and advising on trade marks, geographical designations, patents, industrial designs with the Patent Office - Drafting of license and franchise contracts - Litigation EUR 180 plus VAT per hour 4
TORKIN MANES LLP Violet French Tel: +1 416 777 5437 Email: vfrench@torkinmanes.com Suite 1500, 151 Yonge Street, Toronto, ON Canada M5C 2W7 Full range of intellectual property registration services for Canada, including trade marks, copyright, industrial design (design patent) and patents (utility patent) All in Canadian Dollars (exclusive of disbursements and applicable HST) Trade-Mark/Registrability Searches $500 to 550 per search Preparation and Filing of Canadian Intellectual Property Office Trade-Mark Application $1,250 (includes government fees) Typical Fees and filing fees/disbursements to see a Trade-Mark application through to registration (assuming no oppositions or extensions of time are required) $950-1600 Canadian Copyright filings $550-800 Industrial Design (design patent) Filings $1000-1200 (assuming drawings are already completed) 5
HOLEC, ZUSKA & PARTNERS Dr. Pavel Holec (Partner) Dr. Karel Zuska (Partner) Dr. Oldřich Trojan (Senior Lead lawyer for IT/IP/TMT, data protection and competition matters, Patent Attorney E: paholec@holec-advokati.cz E: kzuska@holec-advokati.cz E: otrojan@holec-advokati.cz Radlická 1c/3185, 150 00 Prague 5, Czech Republic Tel: +420 296 325 235 Fax: +420 296 325 240 www.holec-advokati.cz Our law office provides a full range of intellectual property services relating to Patents Industrial Designs Utility Models ( Petit Patents ) Trade Marks (National, Community Trade Mark, Madrid System) Copyright Domain Names including the registration, prosecution, enforcement, management, transfer and licensing of intellectual property. Trade Mark availability searches in the range between EUR 120 EUR 580 The cost for a trade mark registration in the range EUR 670 EUR 980 Opposition, cancellation, appellate proceedings, recordals, disputes, litigation primarily based on hourly rates, but would be a subject of discussion prior to an engagement and providing of our relevant legal service. 6
NORDIC LAW ATTORNEYS-AT-LAW Alexander Sundström alexander.sundstrom@nordiclaw.fi Attorney-at-Law Zacharias Sundström, J.D. Ph.D. Nordic Law Attorneys-at-Law Uudenmaankatu 36 a 2, 00120 Helsinki, FINLAND Tel: +358 9 682 9340 GSM:+358400960471 Nordic Law Attorneys-at-Law has a wide-ranging selection of services regarding the various matters concerning IPR law. Regarding our services, it can be mentioned that, among other, we assist in all kind of disputes and negotiations concerning trademark law. We also assist with the drafting of various applications related to acquiring various trademarks. Costs are naturally always separately negotiated with the client, but our standard terms of engagement include an hourly fee of 230 Euros 7
MELCHERS Markus Faust (Partner) tel. +49 69 653 0006-66 email: m.faust@melchers-law.com Dr. Dennis Voigt (Partner) tel. +49 69 653 0006-63 email: d.voigt@melchers-law.com Gerhard Boß (Partner) tel. +49 69 653 0006-61 email: g.boss@melchers-law.com Dr. Arndt Riechers (Partner) tel. +49 62 211 850-0 email: a.riechers@melchers-law.com Rechtsanwälte Partnerschaftsgesellschaft, Frankfurt am Main, Germany Research / evaluation of conflicting trade marks / slogans / claims Registration of German / EU-Trade Mark application Representation in front of trade mark office / courts / opponents RESEARCH - word trade mark (German/EU/IR): identical: 70,00 plus 10,00 per class / similar: 260,00 plus 50,00 per class, plus evaluation approx. 2.500,00 per trade mark - Word-picture trade mark/picture trade mark (German/EU/IR): research 450,00 plus 85,00 per class, plus evaluation approx. of 2.500,00 per trade mark - slogan/headline check: 230,00 research costs, evaluation approx. 2.000,00 FILING OF APPLICATION FOR REGISTRATION: - authority fees Germany: 290,00 plus 100,00 for each class beyond third class, EU-Trade Mark 900,00 plus 150,00 for each class beyond third class, legal fees: 250,00 per trade mark REPRESENTATION/ADVICE (in particular regarding description of goods/services, trade mark strategy) charged on hourly basis, standard hourly fee: 240,00 Please note that all prices referred to above are net. Please note as well that research costs are subject to a rebate of 10%. 8
BOASE COHEN & COLLINS 2303-7 Dominion Centre, 43-59 Queen's Road East, Hong Kong, PRC. Tel: +852 3416 1711 Fax: +852 2529 5035 Mobile: +852 9488 4674 Email: Colin Cohen, Partner colin@boasecohencollins.com Susan Cheung, Assistant Solicitor susan@boasecohencollins.com Tel: +852 3416 1988 Trade Mark, Design and Patent registrations in Hong Kong See attached schedule 9
REGISTRATION OF TRADE MARKS FEES (As at 1 st January 2012) Official fee (HK$) Service charge (HK$) Total (HK$) (Equiv.) (US$) A. Application 1. Searches Identical mark search for one word mark in one class Nil 600.00 600.00 80.00 Search for each additional class for one word mark covered by the search Nil 300.00 300.00 37.50 Identical mark search for one device mark in one class Nil 800.00 800.00 105.00 Search for each additional class for one device mark covered by the search Nil 500.00 500.00 62.50 2. Filing of trade mark application Filing for first class of goods and services 1,300.00 3,500.00 4,800.00 538.00 For each additional class (if any) 650.00 1,750.00 2,350.00 305.00 Claiming convention priority per mark Nil 1,000.00 1,000.00 128.00 3. Advertisement and Registration For one mark in one class Nil 2,500.00 2,500.00 250.00 For each additional class Nil 1,250.00 1,250.00 125.00 B. Post-Registration 1. Renewals For one mark in one class of goods and services 3,000.00 2,5000.00 5,500.00 687.50 For each additional class (if any) 1,500.00 1,250.00 2,750.00 345.00 Late Renewal 500.00 1,000.00 1,500.00 187.50 2. Assignments / Licences :- Application to record a registrable transaction 800.00 3,500.00 4,300.00 537.50 each additional mark Nil 1,750.00 1,750.00 218.75 each additional class for the same mark Nil 1,000.00 1,000.00 125.00 10
REGISTRATION OF PATENT FEES ALLIANCE TRADE MARK SERVICES (As at 1 st January 2012) A. Standard Application (20 years term) 1. Government fee on filing request to record a Designated Patent Application. Solicitors fee Advertisement fee 2. Maintaining an application for a Standard Patent for a further year after expiry of 5 th year Solicitors fee Government fee HK$ 380.00 4,000.00 68.00 1,000.00 270.00 US$ (Approx. equiv.) 50.00 515.00 10.00 130.00 35.00 3. Government fee on filing request for registration of designated patent and grant of a standard patent 380.00 50.00 Solicitors fee 3,000.00 385.00 Advertisement fee on request for registration and grant 68.00 10.00 4. Renewal of Standard Patent after Expiry of 3 rd year Solicitors fee 1,500.00 130.00 Government fee 540.00 70.00 B. Short-Term Application (8 year term) 1. Government fee on filing application for grant of a short-term patent 755.00 100.00 Solicitors fee 4,000.00 385.00 Advertisement fee 68.00 10.00 2. Renewal Government fee 1,080.00 140.00 Solicitors fee 2,500.00 260.00 C Miscellaneous Recordal of an Assignment Solicitors fee 1,500.00 200.00 Government filing fee 325.00 45.00 11
Requirements for a National Phase Patent application (Standard Application) The following information and documents are required for the filing of a national phase patent application in Hong Kong : 1. The Applicant Full particulars of the applicant including the :- (a) name; (b) address; (c) country of incorporation; (d) business nature (e.g. manufacture, merchant or both); and (e) particulars of inventor(s) if different from applicant. 2. The Patent Application A copy of the patent application as filed upon which the Hong Kong application is to be based. 3. Priority Kindly provide us with the details of the priority claim :- (a) date of application in priority country; and (b) application number; (c) publication number; (d) copy of the application as published in the priority country; 4. Translation A certified translation of the non-english patent application. 12
ADVAYA LEGAL Ramesh Vaidyanathan, Managing Partner Email: ramesh@advayalegal.com Tel: 91-22-61237800 Fax: 91-22-61237801 Address: 1, Lalani Aura, 34th Road, Bandra (West), Mumbai - 400 050, India www.advayalegal.com Trade Mark Search, Application and Registration Trade Mark Monitoring Trade Mark Renewals Trade Mark Opposition Proceedings Trade Mark Enforcement / Prosecution Trade Mark Analysis/Opinion Trade Mark Assignment, Licensing and Transmission Stage Professional Fees Government Fees Total Fees Pre-filing due diligence (comprising search in the online portal of the registry and letter of advice to client on availability of the trade mark) Preparation and filing of trade mark application $100 per class Nil $100 $300 per class $75 per class $375 Obtaining registration certificate $150 per class Nil $150 All amounts are in United States dollars. The hourly rates (in USD) are as follows: Associate $125 Senior Associate $175 Partner $275 13
Notes: (i) Our professional fees shall be invoiced in instalments at various stages of the registration process. (ii) In case of objection or opposition proceedings, hourly rates (as specified above) will be charged. 14
SHUGOL, KETZEF, KERNER & CO. / M. FIRON & CO. Ronen Ketzef ketzef@firon.co.il Ph: +972-3-7540000 Aurec House, 16 Abba Hillel Silver Road,Ramat Gan 52506, Israel Tel:: +972 3 7540113 Fax: +972 3 7540031 www.firon.co.il IP in a nutshell: Copyright copyright exists by the very fact of an author's creation, without need of formal registration. For most types of creative work, the right of protection extends throughout the lifetime of the author and for 70 years thereafter. In respect of recordings and photographic works, protection is for 50 years as of the date of creation of the master (in recording) or the negative (in photography). Patents and designs these must be formally registered with the Registrar of Patents, Designs, & Trade Marks. Until application for registration is filed, maximum confidentiality should be preserved. Publicity or the exposure of a patent or a design prior to filing an application for the registration thereof precludes the possibility of statutory protection. Registration is constitutive and not declarative. Trade Marks:- The essential function of a trade marks is to exclusively identify the commercial source or origin of products or services, so a trade mark, properly called, indicates source or serves as a badge of origin. Trade Marks serve to identify a particular business as the source of goods or services. Trade Marks are subject to formal registration in each territory its owner wishes to protect it. Trade Marks provide great commercial value to the business, helps to preserve its distinctiveness and helps to protect the business in case of an infringing use by unauthorized party. Passing off this refers to public protection against deception in the use of marks (not being registered as trade marks pursuant to the Ordinance), in similar forms or products, such as are liable to mislead the public into believing that goods, or services belonging to A, in fact belong to or were created by B. There is no registration requirement; however, the condition for protection is that the name, the mark or the form enjoys a reputation among the public. The term "passing off" also includes "auditory passing off" for situations in which the form of writing of the name is dissimilar (Hebrew/ other language, different spelling and so forth) yet the names are pronounced similarly in such a way as to be misleading. Goodwill reference is generally to acts of marketing, advertising and public relations on the part of the brand-name holder. Where there is no goodwill there can be no protection. The protection period is unlimited. Trade secret relates to business information of any type that is not generally known or readily ascertainable through proper means, and that secures its owners a commercial advantage over the competition due to its secrecy provided that the trade secret holder uses reasonable measures to protect the secrecy of the information. The protection period is unlimited and is contingent to the secret not having been in any way made public by its owner. Protection expires the moment the matter is made public. 15
Rights in plant species protection of the development of new species of plants. Our firm engages in each of the abovementioned areas of expertise, both in Israel and abroad, in the representation of its clients in court against bodies or individuals whose occupation involves some form of injury to clients' intellectual property rights. The firm serves its clients in conducting negotiations vis-à-vis publishers, record companies and other bodies engaging in the marketing of various types of art. In addition, the firm acts on behalf of its clients in filing applications for the registration of trade marks, and rights of breeders, designs and patents. 16
RASLAN LOONG Loong Caesar, Executive Partner Email: caesar@raslanloong.com Tel: +60 3 6205 Fax: +60 3 6205 2771 Suite 08-03, Level 8, Wisma Mont Kiara, 1 Jalan Kiara, Mont Kiara, 50480 Kuala Lumpur, Malaysia rexlex@raslanloong.com All trade mark matters from application to registration Kindly request our complete fee schedule from Caesar@raslanloong.com 17
CORNEJO, MÉNDEZ, GONZÁLEZ Y DUARTE, S.C. José Luis Duarte Cabeza (52) 5540-4450 ext. 225 jlduarte@cmgdlaw.com Alfonso González Uribe (52) 5540-4450 ext. 223 agu@cmgdlaw.com Ana Laura Méndez Burkart (52) 5540-4450 ext. 228 amb@cmgdlaw.com Montes Urales 415-3A, Col. Lomas de Chapultepec C.P. 11000, México D.F. Tel (52 55) 5540-4450 Ext 225 Cel (52 1 55) 2979-9082 Dir (52 55)5540-6171 E: jlduarte@cmgdlaw.com Research regarding availability for registration of trade marks Registration of new trade marks Renewal of trade marks Assignments of registered trade marks Amendments to trade mark registries Litigation (actions for nullity, lapsing, infraction and related with denial of registry), in all stages including constitutional proceedings. Registration of a trade mark - $700 USD approximately plus costs (.i.e. governmental duties) Each of the other scope of services is valued individually. 18
McVeagh Fleming John Woolley (Principal) Andrew Knight (Principal) Email: jwoolley@mcveaghfleming.co.nz Email: aknight@mcveaghfleming.co.nz Ph: +64 9 377 9966 Ph: +64 9 377 9966 Fax: +64 9 379 4230 Fax: +64 9 379 4230 Level 14, 1 Queen Street, Auckland Central, Auckland 1140, New Zealand Trademark Search / Registration Requirements Processes Trademark Applications, Registrations and Renewals Trademark Litigation INDICATIVE COSTING Stage Pre-filing due diligence (comprising search of trademarks register and letter of advice to client on availability of the trademark) Preparation and filing of trademark application (one class) Professional Fees $ Government Fees $ Total Fees $ 500.00 Nil 500.00 450.00 150.00 (Application Fee) Additional fee per additional class 150.00 150.00 (Application Fee) Reporting on examination outcome and formalities response to Examiner Detailed Advice on Examiner's Report and preparing a substantive response Processing notice of acceptance, payment of registration fee 600.00 300.00 450.00 Nil 450.00 Hourly rate Nil Hourly rate 200.00 Nil 200.00 Processing certificate of registration 200.00 Nil 200.00 All amounts are in New Zealand dollars and are exclusive of GST (if applicable). The hourly rates are as follows (excluding GST): Legal Executive $250.00 Junior Solicitor $180.00 Solicitor $250.00 Principal, Special Adviser, Special Counsel, Consultant... $495.00 19
THE LAW FIRM OF BELO GOZON ELMA PAREL ASUNCION LUCILA Atty. Roberto Rafael V. Lucila Atty. Roberto O. Parel Atty. Pierre M. Cantara Tel.: (632) 816-3716 to 19 ; (632) 8124496 to 97; (632) 8140606 to 09 Fax. : (632) 8170696 ; (632) 812-0008 Website: http:// www.bgepal.com 15 th &16 th Flrs., Sagittarius Condominium, H.V. Dela Costa Street, Salcedo Village, Makati City 1227, Philippines The Firm has a broad based general legal practice with Philippine and multinational companies as well as noted personalities as clients. The Firm s expertise in the areas of foreign investment, aviation, mass media, telecommunications, corporate rehabilitation/insolvency, natural resources and energy, taxation, dispute resolution, international and domestic arbitration, labor, legislative/executive department work and initiatives as well as government contracts and projects, continues to be engaged by the clients. The lawyers of the Firm are qualified and competent to appear at all levels of the Philippine judiciary, both civil and criminal courts, and before quasi-judicial and administrative bodies, arbitration tribunals, as well as the Congress of the Philippines. 20
IZABELLA ŻYGLICKA AND PARTNERS Izabella Żyglicka and Partners ul. Uniwersytecka 13 Katowice 40-007 Poland +48 32 60 30 430 (Phone) +48 32 60 30 435 (Fax) website: www.kpr.pl Contacts: Jaroslaw Rudy - j.rudy@kpr.pl Grzegorz Olszewski - g.olszewski@kpr.pl Our law firm provides a full range of intellectual property law services including trademarks. 1. Verification of availability of trademark registrations in domestic, EU and worldwide bases, - 300 euro 2. Preparation and filing of trademark application in Polish Patent Office 400 euro plus Patent Office registration fees (approximately 250 euro, subject to changes) 3. Other services 100 euro per hour For more information please use the contact details above. 21
BUZESCU CA Petru Buzescu, Cabinet de Avocat Alex Cretu, Associate acretu@buzescu.com Emanoil Porumbaru 22, Sector 1, Bucuresti 011425, Romania Tel: +40 21 222 4422; Mobile: +40 765 445 104 www.buzescu.com We advise on: trade mark registration; trade mark searches; trade mark due diligence; trade mark acquisition; trade mark oppositions; contest applications; Customs intervention applications; seizure and destruction of counterfeited products; IPR purchase agreements; Employee Innovation and Proprietary Information Agreements; negotiation of software development and distribution agreements, web design agreements; trade mark, patent, industrial design, and copyright criminal complaints/police investigations and litigation, and unfair competition. 22
MARTI & ASSOCIATS Laura Oteros email: lauraoteros@martilawyers.com Tel: +34 93 2016266 Joan Ramon Miquel (Partner) email: jrmiquel@martilawyers.com Tel: +34 93 2016266 Av. Diagonal, 584, principal, 08021 Barcelona, Spain. Registration of trade marks in Spain (National) and European Union (Community) International trade mark registration (Madrid system) Assignment of trade marks and licences Application for national patents Application for industrial design We can also offer services regarding IT. 23
LINDMARK WELINDER Address: Kungsgatan 2 C, SE-223 50 Lund, Sweden Phone: +46 46 15 10 00 Fax: +46 46 18 94 40 Email: Olof Espmarker, associate, olof.espmarker@lwadvokat.se Björn Welinder, partner, bjorn.welinder@lwadvokat.se www.lwadvokat.se We perform: General trade mark and design protection advice for Swedish and Community trade marks and designs. Evaluation of Swedish and Community Trade Marks and designs Application of Swedish and Community trade marks and designs Registration and renewal of Swedish and Community trade marks and designs Trade Mark and design licensing agreements Trade Mark and design purchase agreements Customs intervention applications Advice on seizure and destruction of counterfeited products The time needed to assess and apply for a Swedish trade mark varies considerably depending on what type of trade mark it is, how many classes are applied for and how unique the mark is. To apply for a fairly unique word mark in one class takes about two and a half (2,5) hours. The Swedish Patent and Registration Office charges 1800 SEK for application of a trade mark in one class and 900 SEK for each additional class. The fees for renewal are the same. All trade mark services that Lindmark Welinder performs are charged by the hour. The hourly rates, all in Swedish SEK excluding VAT, are as follows: Associate Senior Associate Partner 1750 SEK 2100 SEK 2500 SEK 24
BLUM & GROB ATTORNEYS AT LAW LTD Neumuehlequai 6 P.O. Box 3954, CH-8021 Zurich, Switzerland T: +41 58 320 00 00 F +41 58 320 00 01 e-mail: info@blumgrob.ch www.blumgrob.ch Dr. André Wahrenberger, Attorney at Law, LL.M. Registration and administration of trade marks and designs Advertising and unfair competition law Copyright Domain names and corporate name protection Due diligence Franchising IP related civil and arbitration proceedings Marketing agreements Patent, know how and trade mark license agreements Sponsorship and merchandizing Technology transfer Swiss Trade Mark Application (incl. 3 classes): CHF 1 350.00 Swiss Trade Mark Renewal (incl. 3 classes): CHF 950.00 Official Action (translating, analysing/advising, a/o replying re official action): benchmark fee for drafting and filing a counter-statement (reply) CHF 600.00-1 200.00 (per statement), excl. third party costs. Kindly request our complete fee schedule at info@blumgrob.ch 25
JEFFREY GREEN RUSSELL LIMITED Joanne Frears (Solicitor) jef@jgrlaw.co.uk Simon Rees Howell (Director) srh@jgrlaw.co.uk Waverley House, 7-12 Noel Street, London W1F 8GQ UK Tel: + 44 (0)20 7339 7014 www.jgrweb.com A. TRADE MARK REGISTRATION 1. Application: Applying for a trade mark for you including advising on classes of registration and writing the description of goods and services applied for. 2. Examination: explaining the registry examination and reporting to you on it. 3. Advertisement: checking the advert is correct and notifying you of the start and finish dates of the advertising period. If we receive notice of any oppositions to your application we will let you know immediately and we will advise how to deal with these. 4. Registration: filing the registration form (if applicable), checking the registration certificate and couriering it to you, or placing it in safe storage for client. B. OPPOSITIONS AND DISPUTES As well as advising on registrations, we can help you to protect your registered and unregistered trade marks. We provide expert advice and assistance on Oppositions and dispute resolution. 1. Application: drafting and filing application, 350 for first class and 50 for each additional class of registration. For applications in 8 or more classes we offer a 15% discount per class. 2. Examination: Reviewing and advising on Registry examination report 100. Fixed fee wherever possible for dealing with more complex issues arising from an Examination Report. 3. Advertisement: Checking advert and advising on start and finish dates of advertising period : 50. Fixed fee wherever possible for dealing with more complex issues arising from an Objection or Opposition. 4. Filing: Checking the registration certificate and couriering it to client or placing in safe storage 50. Oppositions & dispute resolution: Charges for this will be discussed and as far as possible agreed with you at the outset, but will be based primarily on time spent working on resolving the matter for you. All charges are subject to VAT where applicable. 26
RICH MAY, P.C. Registration/Prosecution: Mary E. Landergan E: mlandergan@richmaylaw.com Tel: +1 617-556-3833 Litigation: Frank N. Gaeta, E: fgaeta@richmaylaw.com Tel: +1 617-556-3838 Address: Rich May, P.C., 176 Federal Street, Boston, MA 02110 The firm provides comprehensive trade mark services including state and federal trade mark registration and prosecution, representation before the Trade Mark Trial and Appeal Board, and trade mark litigation. $310/hour - Registration/Prosecution $325/hour - Litigation The legal fees for federal registration generally run between $900-$1200, unless the Trade Mark Office raises objections in which case there may be additional fees. This legal work would include research and analysis regarding the availability of the mark and preparation of and filing the initial application. There is a US Trade Mark Office administrative filing fee of $325 per class of goods or services. 27
MUCH SHELIST, PC 191 N. Wacker Drive, Suite 1800, Chicago, IL 60606 Direct Dial: 312.521.2682 Fax Number: 312.521.2582 Email: mohara@muchshelist.com Website: www.muchshelist.com Adam K. Sacharoff, email: asacharoff@muchshelist.com phone: 312-521-2775 James M. Kunick, email: jkunick@muchshelist.com phone: 312-521-2772 Much Shelist lawyers have helped clients obtain, preserve and protect their trade marks and trade dress in the United States and worldwide. Our lawyers counsel clients through the life of a trade mark and provide strategies for protecting their rights. From the initial stage of selecting a trade mark, our lawyers can conduct trade mark searches to help identify potential rights of others, which may restrict or prevent the adoption and use of the trade mark. Our trade mark attorneys assist clients in obtaining trade mark registrations, policing the registrations and opposing and petitioning to cancel other trade marks that may be too similar to our clients' trade marks. Much Shelist handles domestic and international trade mark clearance, registration and protection. We fully defend our clients against charges of infringement and unfair competition. Our lawyers assist clients in protecting the overall image and packaging of a product through trade dress protection. Enforceability of trade dress overlaps other areas of intellectual property law, including trade mark, copyright, patent and unfair competition. Much Shelist attorneys have extensive experience in this area and can help clients identify all aspects of protection, working with them to fully protect their rights 28
MOYE WHITE LLP 1400 16th Street, 6th Floor, Denver, Colorado, 80202-1473 United States Tel: +1 303 292 2900 Fax: +1 303 292 4510 Charles F. Luce, Jr., Partner, Tel: +1 303.292.7916, Email: charles.luce@moyewhite.com Moye White's attorneys are adept in the selection, protection, and defence of clients' trade marks and associated intellectual property. Our expertise includes analysis of candidate marks, comprehensive trade mark searches, prosecution of state, federal, and international trade mark registrations, and trade mark litigation. We also have significant experience in opposition and cancellation proceedings before the U.S. Trade Mark Trial and Appeal Board, as well as resolution of domain name disputes, including cybersquatting under the Uniform Domain Name Resolution Process (UDRP). We conduct trade mark and other intellectual property due diligence in connection with mergers and acquisitions, IPOs, and reorganizations to determine the validity and security of intellectual property assets. 29
VARNUM LLP 333 Bridge Street, N.W., Suite 1700, Grand Rapids, Michigan 49504, USA Phone: + 1 616-336-6000 www.varnumlaw.com Harvey Koning (Partner Corporate Law) Phone: + 1 616-336-6588 Fax: +1 616-336-7000 Email: hkoning@varnumlaw.com Tim Eagle (Partner Trade Mark and IP) Phone: + 1 616-336-6537 Fax: +1 616-336-7000 Email: teeagle@varnumlaw.com Varnum LLP provides a full range of United States trade mark services, including trade mark searches, trade mark registration and trade mark disputes. We have obtained thousands of trade marks for hundreds of clients over the years. We also have experience coordinating trade mark work in multiple countries. Varnum LLP does ongoing monitoring of thousands of trade marks belonging to our clients. Timothy Eagle is the head of our Intellectual Property Group and is admitted to practice before the United States Patent & Trade Mark Office. The first search is a preliminary or "knock-out" search. This is a search that includes of U.S. federal, state and Canadian applications and registration as well as a common law database and Google searches to determine if there is anything that would "knock-out" the mark that is chosen. The results of the search are typically emailed within one week at a cost of approximately $400.00-500.00. The second step is a comprehensive or "full" search. Similar to the preliminary search, a full search includes both U.S. federal and state applications and registrations. This does not include Canadian information (although it could for an additional fee). The full search does include more comprehensive common law uses and Internet domain name registrations which may impact the availability of the proposed mark. Within usually two to three weeks, a written opinion is given as to the availability of the mark. This process costs around $1,500.00 to $2,000.00 which includes the cost of the commissioned search. If the mark appears to be reasonably available for use and registration, we may prepare an application to be filed with the U.S. Trade Mark Office. Goods and services are classified by the U.S. Trade Mark Office into several classes. The cost of preparing and filing an application for one class of goods is approximately $800.00 (including our fees and the governmental filing fees). Please note that the governmental filing fees are an additional $325.00 for each additional class, our firm does not charge for additional classes. 30
MUSICK, PEELER & GARRETT, LLP Whit Bivens, Partner Email: w.bivens@mpglaw.com Ph: + 1 619 525 2553 Reid Dammann, Senior Associate Email: r.dammann@mpglaw.com Ph: + 1 213 629 7611 One Wilshire Boulevard, 624 South Grand Avenue Suite 2000, Los Angeles California 90017-3383 Tel: + 1 213 629-7600 Fax: + 1 213 624-1376 www.musickpeeler.com Trade Mark Services: Clearance, counselling, registration, monitoring, opposition, cancellation, litigation. All services are billed at hourly rates; typical charges are set forth below: Knock out clearance (exact match, Federal Register, brief web search) and report: Approximately $200-$400. Comprehensive Clearance (Outside Vendor performs search ($675) we analyse results and report): Approximately $1,500-$2000 for standard circumstances or more for multiple or complex issues. Application for Registration: Approximately $200 to $500 in attorneys fees; filing fees additional ($275 or $325 per class); office action responses and status reporting billed at hourly rates (Approximately $300-$450 per hour depending on seniority of Attorney). Monitoring (Outside Vendor performs monitoring of Federal filings we pass on notices and counsel as necessary): Outside Vendor cost is $250 per year; counselling billed at hourly rates (Approximately $300-$450 per hour depending on seniority of Attorney). Litigation, Opposition and Cancellation: Billed at hourly rates (Approximately $300-$450 per hour depending on seniority of Attorney). 31
PHILLIPS NIZER 666 Fifth Avenue, New York NY 10103-0084 Tel: +1 212.977.9700 Main www.phillipsnizer.com Barry H. Fishkin, Partner - (Chair of Trade Mark Practice) Tel: 212-841-0545 email: bfishkin@phillipsnizer.com; fax:212-262-5152 Helene M. Freeman, Partner- Copyright and Trade Mark Litigation Tel: 212-841-1547 email: hfreeman@phillipsnizer.com; fax: 212-262-5152 Alan Behr, Partner Trade Mark and IP Tel: 212-841-0552 email: abehr@phillipsnizer.com; fax: 212-262-5152 Phillips Nizer provides a full range of trade mark, copyright, technology and trade secret services, as well as patent counselling. Trade Mark services include conducting clearance searches, filing and prosecuting trade mark applications, handling Declarations of Continued Use and Applications for Incontestability, extension requests and Statements of use for Intent To Use applications, handling opposition and cancellation proceedings, litigating trade mark disputes, monitoring client's marks, arranging and monitoring the acquisition of trade mark registrations in counties around the world and licensing trade marks and design services. Copyright services include licensing and litigation. Technology services include licensing of software and technology services, e-commerce and technology transfer agreements. Patent services include counselling clients, but not preparation of patent applications, which is arranged on a referral basis. Trade Mark services are generally billed at hourly rates, but flat fees are offered and the fee arrangement applied to an engagement depends on the contents of the engagement letter. Knock out clearance searches (USPTO database and Google search) are done on an hourly basis. Sometimes this is done at the outset of an engagement on a promotional basis. Hourly rate charges are generally approximately $175 to $350. A comprehensive clearance search and report generally costs $725 for one mark for a vendor and about $800 to $1,200 in professional fees to analyze the search and report to the client for a 32
straightforward situation. More complex situations entail a higher fee. The preparation and filing of a U.S. trade mark application and the incidental correspondence with the client generally entails professional fees of approximately $300 to $850. We offer a flat rate of $650 per application for one mark in one class. The USPTO filing fee ($275 or $325 per mark per class) is additional. Flat rates are offered for renewal applications ($600), declarations of use and incontestability ($500), Statements of use ($400) and extension requests ($350), although these matters are also done on an hourly basis (about $230 per hour). The USPTO filing fees for one mark in one class ($500 for a renewal application, $300 for a Declaration of Use and application for Incontestability $100 for a Statement of use and $150 for an extension request), are additional. Opposition and cancellation proceedings and litigation is done on an hourly basis. Rates range from $230 to $620, depending on the seniority of the professional performing the services. The monitoring of a mark entails a vendor cost of about $250 per year. Disputes are billed at hourly rates. 33
OBERMAYER REBMANN MAXWELL & HIPPEL LLP Robert I Whitelaw Firm Chairman, Co-Chair, Litigation Department Phone +1 215-665-3206 Email: Robert.whitelaw@obermayer.com Anastasius (Tassos) Efstratiades Chair, Business & Finance Department Phone: +1 215-665-3030 Email: Tassos@obermayer.com Joseph Centeno Chair, Labor Relations & Employment Law Phone: +1 215-655-3107 Email: Joseph.centeno@obermayer.com One Penn Center, 19th Floor, 1617 John F. Kennedy Boulevard Philadelphia, PA 19103-1895 Obermayer intellectual property attorneys are both sophisticated and creative. Our attorneys have experience with virtually every type of product and service and every facet of trade mark protection. We also advise clients on the best path to protect, advocate, and leverage valuable IP assets. We have the capability to draft and prosecute trade mark applications in the United States and internationally; provide a comprehensive prior art search; and advise on infringement matters. Our intellectual property litigators regularly represent clients in enforcing or defending their trade mark rights. We have significant experience in defending and prosecuting trade mark, trade dress, cybersquatting, false advertising and false association/false endorsement actions for businesses and individuals. 34
EVANS & DIXON LLC Ron Hack Email: rhack@evans-dixon.com Tim Tierney Email: ttierney@evans-dixon.com Steve Scissors Email: sscissors@evans-dixon.com Phone +1 314-621 7744 Address: 211 North Broadway, Suite 2500, St. Louis, Missouri 63102 SEE OVER FOR DETAIL Summary Schedule of Fees: Third-party fees are estimated. For any services which a range of fees is listed we can provide an estimate or not-to-exceed price once we receive the relevant information from the client of third-party. 2013 Schedule of Fees Intellectual Property Services Major Patent Matter Our Fees 3rd Party Fees* Gov't Fees Prepare/File U.S. Design Patent Application $1,200 $500+ $265 $530 Prepare/File U.S. Utility Provisional Patent Application-Mechanical Invention-Minimum to Moderate Complexity $3,000 $500+ $125 $250 Prepare/File U.S. Utility Non-Provisional Patent Application-Mechanical Ω Invention-Minimum to Moderate Complexity (Up to 20 Claims-3 Independent Claims) $6,000 $500+ $625 $1,250 Prepare/File PCT Original Application Mechanical Invention Minimal to Moderate Complexity (Up to 20 claims) $7,000 $500+ $3500- $4,000 Filing in USPTO a Previously Filed Foreign Application Received and $800 $0 $625 Ready for Filing $1,250 Filing Previously Prepared U.S. Application Abroad, Per Country $800 Varies by Varies by Country Country Filing Previously Prepared U.S. Application as PCT Application in U.S. $900 $0 $3,500- $4,000 Patentability or Novelty Search-Mechanical Invention-Third Party Search with Attorney Review of Search Results $1,000- $2,000 $2,000+ $0 35
Major Trademark Matter Our Fees 3rd Party Gov't Fees* Fees Prepare/File Application to Register Mark with USPTO-One Class $675 $50+ $325 Prepare/File 2 Related Applications After First Filing $1,000 $50+ $325 Prepare/File 3+ Related Applications-Each Additional Class/Mark, per $200 $50+ $325 filing Additional Filing After Second Filing Informal ("Knock Out") Trademark Search $350 $0 $0 Comprehensive Trademark Search for Text Only Mark with Attorney Analysis of Search Results $1,200 $675+ $0 Comprehensive Trademark Search in 1 Classification for Mark with Design Elements with Attorney Analysis of Search Results $1,200 $1,200+ $0 Comprehensive Trademark Search in 2 Classifications for Mark with Design Elements with Attorney Analysis of Search Results $1,200 $1,550+ $0 Comprehensive Trademark Search in 3 Classifications for Mark with $1,200 $1,825+ $0 Design Elements with Attorney Analysis of Search Results $1,200 $1,925+ $0 Comprehensive Trademark Search in 4+ Classifications for Mark with Design Elements with Attorney Analysis of Search Results Ω For electronic and computer implemented inventions, we will provide a fixed fee quote upon receipt of a complete invention disclosure. *Third-party fees (typically for searching or draftsman charges) are estimated. For searches, an accurate fixed fee quote will be obtained from the search firm before commissioning a patent or mark search. For applications, third-party fees typically are limited to drafting fees. Small Entity Fee. Large Entity Fee. 36