General Terms
For Engagement Trademark Prosecution and Related Services
The following are terms for using and hiring Clark & Bellamy, P.C. for trademark prosecution services and information you may find helpful in understanding our trademark services. Upon your paid engagement and our acceptance of the formal performance of legal services, the terms are agreed to between you (client) and Clark & Bellamy, P.C. Please print this page or download the text for your records.
Conflicts
Consent. We are unaware of any conflict regarding the matters you have requested our aid in, but this does not guarantee that a trademark conflict does not exist. The client acknowledges that Clark & Bellamy may represent the client’s past, present, or future competitors or a party legally adverse to the client. Possible adverse circumstances include, but are not limited to, the representation of competitors with marks that weaken or dilute the client’s trademark or strengthen the competition’s legal position. The client consents to representation in the circumstances above. Clark & Bellamy will not represent one client in a way that violates the law firm’s duties to any current client and will withdraw from representation in a matter where it believes it cannot fully represent both clients.
Potential Conflicts. Our law firm will reasonably try to find any potential interest or trademark conflicts. Clark & Bellamy does not use any search engine or database to search for conflicts. The attorney relationship entitles clients to a lawyer’s independent professional judgment uncompromised by conflicts of interest. Therefore, if we become aware of potential conflicts of interest during our firm’s representation of your company, we will inform you of such and determine a remedy that may include terminating our legal services, if necessary, to eliminate the conflict. Clark & Bellamy may decline to accept a matter or withdraw representation if the lawyer determines that the client’s case lacks merit, an actual or potential conflict of interest, or a cooperative working relationship with the client is unlikely.
Duties of Law Firm and Client
Law Firm Duties. Clark & Bellamy will provide legal services as necessary to represent you within the scope of this engagement. We shall keep you informed of our activities on your behalf and the status of your file. You agree to keep us fully informed of all relevant facts within our engagement, cooperate with us in pursuing your matter, pay our bills within thirty days, and keep us informed of your current address and telephone number.
Scope of Services and Fees. The client only retains Clark & Bellamy to represent the matter detailed in the intake form or agreed to between the law firm and the client in writing. Further, the law firm is not obliged to provide further services relating to a matter until the law firm and the client agree to proceed, such as substantive office action responses, statements of use, trademark renewal, licensing agreements, or litigation. The law firm will charge a reasonable fee for further services based on a base hourly billable rate of $400. The law firm will estimate how long hourly tasks will take before the client agrees to proceed. Estimates are not guaranteed under all circumstances but will generally be accurate within one half-hour. The law firm’s hourly rate may vary by attorney or increase with demand, experience, or growth.
Flat Fee Arrangements
Flat Fees. When requested, we will provide you with an estimate of fees and expenses for any proposed work. Any estimate of the cost of taking any action is not binding unless we undertake such service on a flat fee basis. Flat fees are narrowly defined to cover only those services described in the flat fee arrangement or on the invoice. A flat fee usually terminates upon performing a specified action, such as filing a trademark application or transmittal with the United States Patent and Trademark Office.
Advance Fees. All advance fees and reimbursements are fully refundable until Clark & Bellamy renders services, subject to processing costs and prior time spent. Clark & Bellamy will refund the client money for services not yet rendered during the process, subject to the set value or time already received. The client is entitled to a reasonable partial refund if the law firm partially renders services. In addition to reasonable attorney fees, the law firm may keep 3.0% of prepaid fees and costs to cover approximate payment processing fees, which the firm does not recover if a refund is issued. For example, if the law firm’s attorneys or staff take time to answer questions asked by a client, and then the client requests a full refund, the law firm may keep $200 for these services already rendered, in addition to other fees for services rendered. The client is not entitled to a refund for flat fee services rendered in total, and the client terminates after filing or government actions contemplated by the terms when the client ordered the flat fee service.
Combo with Filing. A combination SEARCH and FILING flat fee package includes a search valued at a minimum base rate of $399.00. In addition, if the client does not proceed with a trademark filing, the value of attorney and staff time communicating with the client is a minimum of $300. Therefore, Clark & Bellamy will deduct these values from the amount paid for the package and refund the $350 filing fee to the client, less the 3.0% approximate payment processing fee, if the client decides not to file a trademark application.
Combo with Response. A combination SEARCH, FILING, and RESPONSE flat fee package include a search valued at a minimum base rate of $399.00. The package also includes an enhanced analysis and effort versus the standard search and opinion. In addition, the law firm evaluates both the likelihood of USPTO approval and the likelihood of success of the free legal argument that comes with the response combination package in case of a substantive office action refusing registration. Thus, the combination is a minimum $549.00 value. If the client does not proceed with the trademark filing, the attorney and staff time communicating with the client is a minimum $300 value. Suppose Clark & Bellamy provided only the minimum services. In that case, the firm will deduct these values from the amount paid for the package and refund the $350 filing fee and an additional $150 attorney fee, less the 3.0% approximate payment processing fee, to the client if the client decides not to file a trademark application.
Subscription services. Clark & Bellamy renders Y2TM subscription services and other membership subscriptions upon payment and the client’s access to a member area or service. Subscription payments are non-refundable except at the discretion of Clark & Bellamy. The client or law firm may cancel a subscription at any time, and the client and the law firm are relieved of further obligation toward the other. For example, if a subscribed client orders a trademark filing, pays filing fees, and decides not to file a trademark application, Clark & Bellamy will refund the $350 filing fee per class to the client, less the 3.0% approximate payment processing fee.
Filing fees. “Filing Fees,” identified by Clark & Bellamy, are indirect government fee reimbursements intended to cover payment processing fees, Clark & Bellamy firm labor, and government fees. In addition, the law firm prevents loss if a client requests to file a trademark in additional classes. Therefore, “filing fees” are often $50 to $100 higher than the government fee for filing. Our impacted services include but are not limited to new applications, renewals, maintenance filings, statements of use, petitions to revive, petitions to the director, Madrid Protocol filings, notices of opposition, and petitions for cancellation.
Hourly Charges
As more fully discussed below, Clark & Bellamy, P.C. provides many of the services offered in trademark matters on a flat fee basis. Other of our firm’s services are provided based on time charges. Our attorneys’ base hourly rate is $400.00 per hour. A Clark & Bellamy, P.C. attorney may delegate various matters to other attorneys, paralegal assistants, or independent contractors. Associates’ billing rates vary between $60 and $175 per hour. Clark & Bellamy, P.C. may adjust billing rates and flat fee rates for new work covered by this engagement from time to time. Also, Clark & Bellamy, P.C. will pass on all costs and expenses incurred on your behalf when a flat fee arrangement does not cover those expenses. Clark & Bellamy, P.C. may add additional handling charges over and beyond the actual charges for said costs and expenses. Handling charges cover management overhead, processing fees, and other expenses incurred while handling client costs and expenses.
Searches
Search Advised. Before adopting, using, and registering a trademark, it is advisable to search for Federal and state trademark registrations and existing legal rights in unregistered trademarks and trade names to determine any prior conflicting rights. However, we note that even the broadest search cannot guarantee that there would not be a conflict, particularly where others have marks that are not registered. The cost of a search varies between $399.00 and $1500.00 if we complete the work in a typical 21-day turnaround, with higher charges for searches done on an accelerated basis. Our firm may bill for a review of this search report and our opinion regarding availability for use and registration at the standard hourly rate. On average, such analysis takes approximately two hours. Due to the cost of a full search, particularly where you need a rapid review of several potential marks for adoption, we can perform a preliminary in-house search of the Federal and state registers, incurring less cost to you. In-house searches are not always used to make a final decision on a selected mark, but you may use the in-house search to eliminate marks deemed poor candidates for adoption.
Common Searches. Our most common in-house search covers federally registered marks, state-registered trademarks, common law marks, and internet domains. This search provides insights into a brand’s availability and includes a report with an opinion for a flat fee of $750 or on the terms agreed. Also, we complete a knock-out search of the U.S. federal register for wordmarks like yours before filing a U.S. federal trademark application. Clark & Bellamy, P.C. will apprise you of any direct and exact conflicts found. We may refund a portion of your retainer for a trademark application if we decide not to file because of an issue discovered before filing.
Design Search. The costs discussed concern searches for a wordmark. We must search for the element separately if the trademark is a device or incorporates a design feature. We must review the brand’s non-textual aspects before advising on the search requirements and costs.
Additional Search. For flat-fee search packages that include filing, if a client does not file a trademark application for the initially proposed mark, the client may request one additional free in-house clearance search for a new proposed trademark.
State and Federal Trademark Registration Costs
State Registration. If a product will only be sold locally within a state and have no effect on interstate commerce, it will not be possible to apply for federal trademark registration. Generally, a mark cannot be registered at the state level unless and until you use that mark in connection with the sale of goods or services. While a state trademark is relatively inexpensive and easy to obtain, the protection offered is limited depending on each state’s evidentiary effect on its registrations.
Federal Registration. If the mark is “in use” in interstate commerce, you can apply for a federal registration, which offers numerous advantages and provides the foundation for national protection. If you only intend to use the mark in interstate commerce, you can apply for registration based on a genuine intent “to use.” Still, registration will not issue until the trademark is in commercial use within the statutory period from the notice of allowance.
State Application Costs. Clark & Bellamy, P.C. usually handles trademark applications on a flat fee basis. We charge a minimum rate of $500.00 to prepare and file a state trademark application, plus the official filing fee, which varies from state to state.
Federal Application Costs. Regarding Federal registrations, we charge an undiscounted fee of $1200 to prepare and file a federal trademark application in one U.S. class, including the official filing. If the mark involves design or lettering in a unique format, we may add attorney fees plus costs for preparing appropriate drawings. If we file your application in more than one class of goods or services, we may charge an undiscounted additional flat fee of $450 per class to cover the filing fees and extra time required to prepare the application. Clark & Bellamy provides discounts for online and package orders.
Use In Commerce and Intent to Use Costs
Intent to Use Application. If the client does not answer “yes” to the question on the intake form regarding the current commercial use of the trademark, Clark & Bellamy has the client’s permission to apply an “intent to use” basis. If we file the U.S. federal trademark application based on “intention to use” the mark, we must prepare a Statement of Use after allowance with attendant costs and attorney fees. If the use of the brand does not occur within six months of the application’s approval, we will need to request one or more extensions with attendant costs and attorney fees. If the submission is objected to or rejected by the Examiner, you will incur additional charges connected with perfecting the application and obtaining allowance. You will incur such fees at the standard hourly rates or based on a new flat fee arrangement. In addition, clients may subscribe to a membership engagement with Clark & Bellamy that includes future fees and costs as detailed by the itemized membership services included with the subscription membership level.
Change to Intent to Use. For procedural reasons, such as an inadequate specimen, the client gives Clark & Bellamy permission to switch a trademark application’s status from “Use in Commerce” to “Intent to Use.” In this case, the law firm will charge the client for attendant costs and attorney fees. In addition, the client may request the law firm’s assistance to identify a specimen likely to be approved by the USPTO.
Professional Discretion
Attorney Discretion in Trademark Prosecution. The client gives Clark & Bellamy the right to use professional discretion in handling informalities before the USPTO. Clark & Bellamy may determine to disclaim certain words in the client’s trademark application unless the client requests explicitly that certain words not be disclaimed. The client gives Clark & Bellamy permission to follow USPTO recommendations to amend an application to the Supplemental Register unless otherwise instructed by the client in a written communication before the amendment.
Registration Certificate. Clark & Bellamy will send the client a PDF version of the registration certificate after a client’s mark registers. The client may request a hard copy of the certificate or a certified copy by mail for a charge of $100 plus mailing fees per certificate.
Foreign Trademark Registration
Generally, the law protects trademarks on a territorial basis, i.e., country by country. Each nation must clear and register a mark under its rules. If you have a bona fide place of business in one of the countries that are a party to the Madrid Protocol, we may be able to obtain an International Registration. If you are interested in filing in any nation, we will be glad to provide specific information about any search, registration costs, and strategy we can offer.
Vigilance Searches
Once you commence using a trademark, it is vital to protect it against infringement and oppose the registration of any mark that may be too close to your brand. A vigilance search is an ongoing search of the trademark office records in one or more countries to protect your mark by locating trademarks that may present such problems.
Subscriptions with Watch Service
A monitoring watch subscription includes about one monthly check via software or scanning for new applications with marks similar to the client’s wordmark. Clark & Bellamy will email the client when the law firm finds a result of significant interest. Because of software or attorney search limitations, Clark & Bellamy is not responsible for identifying all new applications of interest.
Notice Letters
Clark & Bellamy will only send trademark notice letters the attorney believes have legal merit. The law firm will not send frivolous or gratuitous letters. The law firm will send notice letters by email unless the client pays separately for mailing and physical handling. A notice letter includes up to 30-minutes of email and phone calls with a letter recipient or recipient’s legal counsel. Clark & Bellamy will bill the client the law firm’s hourly rate of $400 for any additional time spent negotiating a notice letter. Clark & Bellamy will not handle trademark litigation. The client acknowledges that Clark & Bellamy recommends retaining separate trademark litigation counsel before threatening or filing litigation. The client accepts any legal risks associated with notice letters sent without the input of litigation counsel.
Oppositions
Clark & Bellamy trademark application and subscription services do not include filing any notice of opposition or handling of opposition or Petitions for Cancellation with the USPTO. Clark & Bellamy will inform the client of any trademark applications or registrations. It becomes aware that the client may benefit from opposing or petitioning to cancel at the attorney’s discretion.
Deposits
We may require a deposit against our previous balance, fees, and disbursements. If this deposit is exhausted, we may request additional deposits as needed. You will need to replenish these deposits as requested within ten (10) working days of our request. The client agrees that Clark & Bellamy, P.C. has the right to require prepayment of out-of-pocket expenses, such as filing fees, before incurring such costs.
Invoices
Clark & Bellamy, P.C. will invoice the client for the services rendered. Occasionally, an invoice may include fees, charges, or expenses for more than one preceding month of services or that client did not previously pay.
Payment
Due Date. Our invoices are due and payable when tendered to the client. However, it is considered overdue if an account is unpaid for more than 30 days from the invoice’s date. We, at our discretion, may cease to undertake services until the client pays all overdue amounts. In addition, Clark & Bellamy, P.C. may add a late charge of one percent a month for the unpaid balance of an invoice that the client has not paid in full within sixty (60) days from the invoice date.
Business Funds. Subject to the refund obligations above, the client agrees that advance payments to the law firm are deposited to the law firm’s business operating account and treated as Clark & Bellamy’s business funds under the Georgia Bar rules.
Earned Fees. Client payment includes funds for the specific trademark action request, attorney availability, and communication. Clark & Bellamy earns any fees or reimbursements held by Clark & Bellamy after two years from the payment date. After that, the fees are no longer refundable unless the client explicitly arranges for long-term retention and holding of funds.
Discounts
Clark & Bellamy, P.C. sometimes discount fees to compensate for improved efficiency when combining services or offering trademark services online. Clark & Bellamy may also discount fees in exchange for client feedback or client loyalty.
Expedited Trademark Filing Packages
Expedition Effort. Upon the client’s expedition payment, Clark & Bellamy will attempt to perform the trademark search and filing as quickly as possible, not exceeding a two-business-day wait. However, suppose the law firm has additional questions for the client. In that case, the law firm will ask the client questions within two business days of the client hiring the law firm or upgrading to an expedited package. Whereas if the client asks the law firm a question, the law firm will answer within two business days. Otherwise, Clark & Bellamy will file the client’s trademark application or provide a search opinion within two business days of the client hiring the law firm. The “two business days” do not include the day the client hired Clark & Bellamy. For example, suppose the client hires the law firm at 8:00 AM on Monday. In that case, Tuesday is the first business day, and Wednesday is the second business day. Thus, Clark & Bellamy’s expedited deadline is Wednesday night.
Services Covered by Expedition. For the flat-fee search and filing packages, the expedition fee covers all steps of the trademark process through the application filing. After applying, the expedited service ends, and Clark & Bellamy’s response times return to normal. For a search-only package, the expedited service lasts until the delivery of a search report.
Calculation of Expedition. “Business days” means Monday through Friday, except for holidays. The law firm follows the Team Georgia holiday list found in the resource center at https://team.georgia.gov/ and considers December 24 a holiday. Therefore, Clark & Bellamy considers any form submission on or after 5:00 PM EST made on the next business day. Meanwhile, Clark & Bellamy considers updates sent after 5:00 PM as sent on that business day. For example, suppose the client hires the law firm for an expedited package on Monday at 10:30 PM. In that case, the client hired Clark & Bellamy on Tuesday. Clark & Bellamy owes the client an update by Thursday at 11:59 PM, though the law firm will try to get the update to the client sooner. Suppose the law firm sends an update to the client on Thursday at 6:00 PM, and the client sends a response at 8:00 PM. In that case, the law firm owes the client an update two business days after Friday, meaning the law firm owes an update by Tuesday. This cycle will continue until the end of the expedited portion of the package, as described above. The law firm has a grace period of one extra business day to respond to the client to account for medical issues, emergencies, or pressing deadlines. Still, the law firm must do its best to avoid using this grace period. For example, suppose Clark & Bellamy takes more than three business days to deliver an update. In that case, the client is owed a refund for the expedited portion of the package. The client may also request a refund for the filing portion or the entire package under the “Flat Fee Arrangements’ portion of this agreement.
Release
The client gives Clark & Bellamy permission to acknowledge their personal or business status as a client publicly and use their name and branding on the law firm’s websites and promotional materials. The law firm may give details about the client’s matter or business on the internet or promotional materials for testimonial purposes. Further, the law firm may compile client data for internal or external reports. The client may revoke this permission. Clark & Bellamy will not publicly disclose information about the client that the law firm deems sensitive or harmful to the client. Clark & Bellamy will publish the client’s data with the knowledge that the USPTO permanently and publicly posts client details, including a trademark owner’s name and mailing address.
Withdrawal from Representation or Termination
Withdrawal. We may withdraw our representation with your consent or for a good cause. Good cause includes nonpayment of our fees and expenses, your refusal to cooperate with us, or any fact or circumstance that would render our continuing representation unlawful or unethical.
Termination. Representation terminates upon the end of a Clark & Bellamy subscription membership or when a trademark application reaches registration or a client abandons a trademark. Clark & Bellamy may terminate a subscription service at any time.
Disclaimer
Outcomes. We make no promises or guarantees about the outcome of any matter. Comments concerning possible issues are opinions and, as such, express no more than a possible result of our legal services.
Changes in Terms. The client understands that these engagement terms are subject to change from time to time, and the client is responsible for checking the terms periodically when ordering additional services. Clark & Bellamy will not mislead the client by materially altering the terms to remove an obligation to perform a service promised or advertised with the service purchased.
Rules of Professional Conduct
Georgia Rules of Professional Conduct. The State Bar of Georgia maintains and enforces the Georgia Rules of Professional Conduct observed by the members of the State Bar of Georgia and those authorized to practice law in the state of Georgia. The rules are available at https://www.gabar.org/barrules/georgia-rules-of-professional-conduct.cfm.
Lawyer’s Additional Responsibilities. https://www.gabar.org/Handbook/index.cfm#handbook/rule74
Client’s Additional Responsibilities. Georgia has not adopted a formal statement of the Client’s Responsibilities. Our law firm incorporates the Informational Statement Adopted by the New York State Bar Association. https://nysba.org/app/uploads/2020/01/StatementClientsResponsibilities.pdf
Acceptance and Electronic Acceptance
The client is 18 years old or has express permission and guidance from a parent or guardian to enter this agreement.
Upon notice and online electronic acceptance via click-through, facsimile delivery, retention, or payment for our services, the client acknowledges receipt of this letter and acceptance of its terms for trademark-related services.
Retaining our services by paying any retainer or advance fee acknowledges your electronic receipt of this letter and consent to its terms.
v3 updated 11/04/2022