U.S. Trademark Registration
Whether protecting your brand, your products or your business name, a U.S. trademark is one of your most vital assets. With the guidance of a licensed trademark attorney, navigate the trademark process with complete confidence. All trademark applications in the U.S. are managed by U.S. licensed trademark attorneys.
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- Federal Search for similar trademarks
- Attorney manages your free search
- Attorney manages your trademark application
- Electronic filing with the USPTO
- Services provided by Classic Counsel, P.C.†
TRADEMARK LEARNING CENTER - by Trademarks On Call®
Provided by Trademarks On Call®, the Trademark Learning Center is for informational purposes only, not legal advice. Select a topic below to learn more about trademarks:
TRADEMARKS - The Registration Process
The filing of your trademark application with the U.S. Patent and Trademark Office (USPTO) begins a lengthy and complicated process which hopefully leads to the eventual registration of a trademark. Most trademark applications are filed based on one of the following: (1) in-use basis, or (2) an intent-to-use basis: in-use basis: when the application is filed, the trademark is actually being used in commerce to sell and/or promote goods or services. intent-to-use basis: when the application is filed, the trademark is not being used in commerce, but the applicant has an intent to so use the trademark in the future.
TRADEMARKS and the U.S. PATENT AND TRADEMARK OFFICE
The filing of a trademark application with the USPTO does not automatically mean that a trademark will be registered. Several legal hurdles and examination steps must be navigated before the USPTO will register a trademark.
The USPTO typically begins examination of a new trademark application bout 3 months after the application is filed. At this time, the trademark application is forwarded to an examining attorney, who is responsible for its examination.
If during examination legal issues with the application or with the trademark itself are uncovered, and registration is refused, the examining attorney will issue an Office Action explaining all issues. An examining attorney may even contact an applicant directly if there are minor deficiencies that may be corrected via email or telephone.
If an Office Action is received, a response must be filed with the USPTO within 6 months. However, some types of Office Actions may have a shorter deadline, so all Office Actions should be read carefully. If a response is not filed prior to the deadline, the USPTO will abandon the trademark application. Generally, the USPTO cannot grant an extension of time to file a response. If you are unfamiliar with responding to Office Actions, or to ensure you do not miss a deadline, you may want to consult with a licensed trademark attorney.
PUBLICATION & OPPOSITIONS
If there are no legal issues with a trademark application, or all issues have been resolved to the satisfaction of the examining attorney, the application will be approved for publication. The publication of all trademark applications occurs through the weekly publication of the USPTO, namely the "Official Gazette".
Once publication in the "Official Gazette" occurs, a period of 30 days from the date of publication is provided so that any party may come forward with their concerns or oppositions to registration of the mark.
If a party files an opposition, thereby opposing registration of the trademark, the proceedings are taken up by the Trademark Trial and Appeal Board (TTAB). An opposition is a complex and lengthy proceeding similar to a court case - with extensive filings, discovery, interrogatories, and depositions - where eventually the TTAB will rule on the case.
If no opposition is filed, the USPTO will either register the trademark or issue a Notice of Allowance, depending on whether the trademark application was filed on an (1) in-use basis, or (2) an intent-to-use basis.
REGISTRATION OR NOTICE OF ALLOWANCE
If a trademark application was initially filed on an in-use basis (as discussed above), and no opposition is filed during the publication period, the USPTO will register the trademark. The USPTO will mail the trademark owner a certificate of registration.
However, if a trademark application was initially filed on an intent-to-use basis (as discussed above), and no opposition is filed during the publication period, the USPTO will issue a Notice of Allowance. Once a Notice of Allowance is received, an applicant has 6 months to file a Statement of Use, thereby proving that the mark is being used in commerce. If the Statement of Use is accepted, the USPTO will register the trademark and mail the owner a certificate of registration.
If an applicant is unable to file a Statement of Use before the 6 month deadline, the applicant may avoid abandonment of the application by filing a request for a 6 month extension of time to file the Statement of Use. Up to 5 separate extension request may be filed - each extension request being for a 6 month extension.
However, note that either a Statement of Use or an extension request must be filed every six months, prior to each deadline, or the USPTO will abandon the trademark application.
Once a trademark is registered, the USPTO then requires that you periodically renew your trademark. Renewal involves filing the correct forms and the appropriate fees with the USPTO. If a trademark owner fails to file a renewal prior to the deadline, the USPTO will cancel the trademark registration.
The first renewal is due between the 5th and 6th years following the registration of a trademark. For this renewal, a Section 8 Declaration confirming continual use of the trademark for 5 years must be filed with the USPTO. Although optional, at this time trademarks owners should consider also filing a Section 15 Declaration of Incontestability, which makes it more difficult for a third party to cancel or otherwise challenge a trademark.
A trademark registration must also be renewed every 10 years. Between the 9th and 10th years following the registration of a trademark, another Section 8 Declaration confirming continual use along with a Section 9 renewal application must be filed with the USPTO. A trademark must then be renewed every 10 years thereafter.
Disclaimer: Trademarks On Call is not a law firm or a substitute for an attorney or a law firm. Trademarks On Call does not provide legal advice. The information provided on this website is for informational purposes only and does not constitute legal advice.