Trademark registration is managed by the USPTO in the United States. The process has the following steps:
2. Evidence of use
3. Publication for Opposition
4. Issuance of Certificate
During this process applicants may receive an Office Action. Applicants may also face opposition from a third party. Applicants must respond to an office action within 6 months. Applicants that are not US residents must appoint a US attorney to represent them.
Brealant provides all the services necessary for US based and foreign applicants and manages the entire process.
Process for a trademark registration in the USA
The application is filed at the U.S. Patent and Trademark Office. Before filing the trademark, the applicant has to show the fact of use or intent to use or that the mark is registered or applied in other country. Multiple-class applications are possible. An application based on use or an intent to use requires a signed declaration, under oath, by the applicant or its representative.
The application process involves three stages; a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approximately 9 to 16 months if no refusals occur. The first examination usually takes place in approximately three months after filing. During this stage the USPTO may issue an Office Action. Once the office action is resolved or if no office action is issued, the application shall be approved for publication in the Official Gazette.
If the application was filed based on use in United States commerce or on a foreign registration and no opposition has been filed during the 30-day opposition period, the application shall then be registered and a certificate of registration will be issued. Applications based on foreign registration require a specimen of, and affidavit attesting to use during the sixth anniversary of the date of registration. Applications filed based on intent to use in the United States or international commerce with the United States are required to provide an affidavit attesting to use and specimen of use six months after allowance. This period of time can be extended to another six months. After the statement of use is submitted and accepted, the application is now accepted and a certificate of registration is issued.
A trademark registration is valid for 10 years from date of registration. However, an Affidavit of Use and specimen of use should be filed between the 5th and 6th year after the date of registration to avoid cancellation. After 5 years of continuous use of the mark in the U.S., the registrant can elect to claim an “incontestability” status, making the registration subject to fewer legal theories that could result in cancellation.
An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before we can register your trademark.
In an office action, an examining attorney may require that you fix legal problems with the application itself (“requirements”) by making simple revisions, such as clarifying your goods or services. An examining attorney may also raise legal rejections (“refusals”), such as refusing your application because your chosen trademark is likely to be confused with an already registered trademark. However, you may not always be able to fix a requirement or a refusal.
There is a period of time to answer to an office action of six months from the date it issued for the response to be considered “timely.” Some types of office actions have a shorter deadline. One has to read the sent office action carefully to determine the specific deadline for the response.
After the deadline passes and responses are not sent, the application will be considered as abandoned. Fees will not be refunded and the trademark will not register.
An Affidavit of Use and specimen of use should be filed between the 5th and 6th year after the date of U.S. registration to avoid cancellation.
Trademark renewal must be filed between the 9th and 10th year after registration. The registrant is also required to provide an Affidavit of Use and proof of use in filing the renewal. The declaration of use must be accompanied with current evidence of use in order to maintain the registration.
If the mark has not been used for a period of three years, then the law presumes that it has been abandoned and any third party can file cancellation due to non-use or abandonment. The registrant will be given the burden of proving the contrary.
An opposition is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, they can file an opposition. The opposition may be filed against the application during the period of 30 days from the publication date of the application. This period can be extended with its appropriate payment.
This filing option applies to simplified applications using predetermined goods and services.
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