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Frequently Asked Questions
What is a Filing Basis?

When filing a trademark application in the United States, a “Filing Basis” must be selected. You can select from four possible options:

1. “Use in Commerce” basis

If you are currently using your trademark in the United States, we will file your application on a “Use in Commerce” basis.

In this case, you will need to provide the date of first use and also send proof that the mark is being used in the United States. Acceptable proof of use (also called “specimens of use”) might be: a page from a website, an advertisement, a brochure or a pamphlet that describes the product/service and shows the trademark. Labels, tags or packaging are also considered acceptable proof of use for a trademark.

2. “Intent to Use” basis

If you are not using your trademark in the United States, we can still file your application on an “Intent to Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 10 months after the filing date), you will be required to show proof that the trademark is being used. In order to do this, we will file a “Statement of Use,” in which we present the proof of use to the Trademark Office. This will be considered as a separate service and has a cost of US$ 290 per application, for the first class and US$ 240 for each additional class.

Note: If you are not able to provide the proof of use by the deadline, you can request an extension every six months (for up to 3 years from the acceptance notification).  

3. “Foreign Registration” basis

If your trademark is registered in another country, we can file your application on a “Foreign Registration” basis. In this case, no proof of use is required for the registration to be granted.

For this kind of application, you will be required to send a scanned copy of the foreign Registration Certificate, along with a translation signed by the translator.

4. “Foreign Application” basis

If your trademark has been filed in another country in the last six months, we can file your application on a “Foreign Application” basis. In this case, additional information will be needed once the trademark is accepted for registration. You will need to provide either the foreign Registration Certificate of the trademark or proof of use in the United States.

For all of these cases, a Declaration of Use must be submitted between 5 and 6 years from the registration date.

What is the usual time frame for trademark registration in United States?

From filing the application to actual registration, you must consider an average time frame of 10 months.

Is it necessary to use my trademark before I apply for registration?

It is required that you are either actually using the mark or you have intention to use the trademark in the future. Once your trademark is accepted for registration, the Trademark Office will request that you provide proof of use of the trademark, in that moment you will need to be using your trademark for obtaining your registration. 

Do I need a Power of Attorney?

No, you don't need to provide a Power of Attorney for registering your trademark in United States. 

How many applications should I file?

The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the United States.

If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

In this case, proceeding with two trademark applications has the following advantages:

  1. Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
  2. You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
  3. Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.

What are the types of trademark that can be registered in United States?

Signs that help consumers distinguish a product/service from others and marks that are graphically reproducible can be registered. Examples are: 

  • Words
  • Names
  • Colors
  • Taste
  • Sounds
  • Devices
  • Slogans
  • Scents
  • Trade dress
  • Three-dimensional shapes
What type of trademark is non-registrable?

You cannot register marks that contradict the American standards of moral, marks that can cause public disorder, terms that are generic in nature, name of states, flags of nations, emblems of international organization, marks that does not demonstrate distinct characteristics, surnames, and geographical and location names.

Are there any benefits from using a trademark before registering it?

Yes. Using unregistered marks for goods/services is approved by the law. In U.S., the first to use a mark or the first to file for registration, whichever is earlier, is the authorized and legal owner of the trademark. More so, common law rights are acquired through use of a mark. Notice thought that some products that are related to cigarettes and drugs are regulated before they are made available in the market.

Are there any rights established by having a registered trademark?

Yes. When you register a trademark in the United States, you will establish these rights: 

  • Use the trademark exclusively
  • Sue third parties for infringing the registered mark
  • Request for confiscation of fake goods
If I register my trademark in United States, do I have protection in other territories?

Registered trademarks in the United States are protected in its entire geographical scope including territories such as Puerto Rico, Virgin Islands, Northern Mariana Islands, Guam and American Samoa.

Does the United States use the "Nice Classification" system?

The United States uses the Nice Classification System in terms of class number; however, they use their own identification system of goods and services to determine the class description. The difference between the Nice Classification identification of goods and services and the US identification of goods and services is that the US requires the items to be broken out to describe the goods/services in more detail. For example, “clothing” must be broken down to “shirts, pants, skirts, etc." You can review the US identification system of goods and services here.

Is it possible to claim priority in United States?

Yes. If the first application was filed in a country that is a member of the Paris Convention, and it was filed within 6 months from the US filing date, it is possible to claim priority

Do I need to present periodic statement of use?

Yes. The owner of the registered trademark must file a document declaring that the mark is continually used for commerce or trade. This declaration must be filed sometime on the 5th and 6th year after the date of registration. Failure to comply will result to cancelled registration.

What do I need to do to satisfy the use requirement?

Use your trademark within 3 years from the date it was officially registered. It is mandatory to engage the mark on trade or commercial transactions and it must occur within the jurisdiction of the United States.

Will there be problems in case I don’t use my trademark after registration?

Yes. Non-use is a common ground for cancellation of registration.

What are application oppositions and objections?

Your business name is an asset to you and your company. Even after you successfully register your trademark, you still must defend it from legitimate competition, counterfeiters, and unfair business practices that infringe on your property rights. On a regular biweekly basis, the US Patent and Trademark Office (USPTO) releases a list of approved trademark applications for public review. A trademark is not self-enforcing. Part of owning a commercial mark is proactively protecting it. Every two weeks, the public and competing business owners in your chosen commercial market, can file an opposition to an approved trademark. Professional services have the resources and time to watch this constant churn of new information and help you defend your mark in a busy world.

If a mark owner believes your mark infringes on their exclusive rights to property, they will oppose your application during this period and file an opposition with the Trademark Trial and Appeal Board. You must defend your brand and the trademark that shows you own it. 

During the examination process leading to the registration of a trademark, a Trademark Office compares your mark to other existing trademarks and will reject the application if the mark resembles marks already in the marketplace.

If a business owner believes your mark infringes on their exclusive rights to property, they will oppose your application during this period and file an opposition with the Trademark Trial and Appeal Board.

How do I defend a trademark opposition?

When a US Patent and Trademark Office(USPTO) examining attorney has reviewed and approved your trademark application, they release your request for the mark to the public. This step begins a thirty-day period within which anyone to oppose the registration of your mark. This public listing appears in the Original Gazette which is available online.

You have thirty days as the applicant of a trademark registration application to respond to a Notice of Opposition. When you respond to your opposer’s claims, the Trademark Trial and Appeal Board(TTAB) will schedule a legal proceeding, like a mini-trial, to hear both sides of the complaint.

We recommend you hire a professional trademark service or a trademark attorney to build a legal defense, file proper court documents, and respond to any court motions. The TTAB has legal requirements and strict deadlines for any responses to a Notice of Opposition.

The USPTO sends you a Notice of Default if you do not respond to a Notice of Opposition and the TTAB will rule for the opposer. This judgment binds you from any future applications for the trademark under review. You can sometimes file a motion to lift a default ruling.     

How do I oppose a trademark application?

A US Patent and Trademark Office(USPTO) examining attorney will publish a mark after the application examination period. The Tax Authority releases this information in the USPTO’s online Original Gazette. The public has thirty days to oppose a trademark application to stop registration. If you have a personal or business interest and can show the proposed trademark will affect you or infringes on your existing mark or property rights, you can stop the registration process. The opposition process further guarantees that commercial marks in use are authentic, distinct, and limit consumer confusion in buying brand names. 

In addition to claims about the likelihood of confusion, you can oppose a trademark application for many reasons like:

  • The mark is generic and therefore not distinct
  • The mark is descriptive in either physical or geographic terms rather than unique
  • The mark raises social concerns
  • The mark is misleading
  • The mark potential dilutes another mark

 If you oppose the registration of a trademark, file a notice of opposition with the USPTO as the opposer. In your document, explain why you believe the USPTO should not register this mark. The trademark applicant has another thirty days to respond to your opposition claim. The Trademark Trial and Appeal Board(TTAB) sets a calendar date for the proceedings. You do not have to hire a trademark attorney to file a Notice of Opposition, but we recommend you retain professional counsel because trademark opposition hearings are legal proceedings.

Once my trademark has been registered, for how many years will be valid?

The trademark will be valid for 10 years starting on the date of initial registration.

What will be the renewal date of my trademark?

The renewal date is computed 10 years from the date the registration was granted.

Does having a registered trademark in United States afford me any right?

The “First to Use” rule applies in the United States, which means the law does not require registration of mark in order to obtain rights.

What type of trademark is non-registrable?

You cannot register marks that contradict the American standards of moral, marks that can cause public disorder, terms that are generic in nature, name of states, flags of nations, emblems of international organization, marks that does not demonstrate distinct characteristics, surnames, and geographical and location names.

What is the web address of the trademark national office?

Visit the trademark national office at: http://www.uspto.gov/

What is the USPTO?

The United States Patent and Trademark Office is the agency of the Department of Commerce charged with granting patents and registering trademarks in the U.S. for the perpetuation of creativity and innovative endeavors. The USPTO advises the President, Secretary of Commerce and various government agencies on ways to protect, enforce, and promote intellectual property policy in the U.S. and abroad.

The website of the USPTO is www.uspto.gov 

 

Are there any benefits from a pre-filing use of the trademark?

Yes. Some of the pre-filing use benefits are: 

  • Obtain common law rights
  • Establish the date as the mark’s first user
  • Demonstrate distinctiveness of the mark
  • Avoid oppositions due to non-distinctiveness
What are the phases of application after a trademark has been filed in United States?

The application will be examined if it is compliant with the filing requirements. Before the application is submitted, it would be best to ensure first if the mark passes all requirements with regards to clarity, formality, distinctiveness, or any conflict. This will prevent you from being rejected. Once the examination is done, the application details will be published online and third-parties will have a chance to oppose.

Is it possible to cancel a registration?

A petition to cancel a registered mark is possible if these violations are present: 

  • The owner filed the application in bad faith
  • The mark is proven to be immoral or in conflict with public policy
  • The mark is deceiving the consumers
  • The mark is describing the characteristics of the good/service
  • The mark is generic and/or functional
  • The mark is not capable of making the good/service distinct
How long is the opposition period?

It will start on the date the application details are published online and will end 30 days after that date. Extensions are possible to be granted.

What are the grounds for a Trademark Application to be opposed?

Objection to application is available on the grounds of propriety rights, misleading marks, disparaging signs, violation of the rights to a company/business name, and descriptive and non-distinctive marks

What are examples of USPTO Official letters?

There are several types of letters the USPTO sends registration applicants and registered trademark owners. One called an Office Action Letter is common.

There are two kinds of Office Action Letters. They describe non-final and final actions in the trademark process. The Non-Final Action Letter is a form of first-contact that seeks to resolve some issue concerning your application. We recommend you or your representative respond to a Non-Final Letter. You can use the Response to Office Action (ROA) form available on the Trademark Electronic Application System or TEAS.

If you received a Final Action Letter, you can either follow the conditions in the correspondence or file an appeal with the Trademark Trial and Appeal Board. Use the Request for Reconsideration after Final Action to respond electronically using TEAS.

The Office Action Letter send you this letter because your pending mark is registrable and multiple classes are available for registration. You can choose which class(es) best describe your goods and services and your long-term business plans. Choices you make in response to an Office action about adding multiple international classes to your registration application affect current and future application fees.

Several other types of Official Letters that come from USPTO include:

  • Examiner's Amendment - This form of correspondence does not need a response unless an applicant disagrees with a stated position in the document. The USPTO sends you this letter because of changes or an amendment to your application.
  • Priority Action - A Priority Action Letter lets you know of information about some ongoing issue with an application. You or your representative must respond to this notification within six months from the date of the letter or USPTO will abandon your application for registration. You will lose any fees paid as part of the application process.
  • Suspension Letter - This letter lets you know that the USPTO has suspended your application. We recommend you contact a professional that understands the trademark registration process to provide you with counsel.
  • Suspension Inquiry Letter - You might receive this letter from an examining attorney asking for information about the status of a suspended application. You or your representative need to respond to this letter. We recommend you seek assistance from an experienced trademark professional before you respond to the correspondence.
1a, 1b, 44d, 44e, Intent to Use, Actual Use: Application Types

USA: Application Types

A US application can have multiple classes of goods and services, each with its own filing basis.  Even within the same class number (i.e. Class 25 for clothing items), you could have different filing basis (i.e. you can file sweaters as Actual Use and shirts as Intent to Use).  The following describes how each filing basis works alone and with each another:

 

 1a (Actual Use) – You must provide proof of use of the mark in the US at the time of filing.  No further filings should be necessary (other than addressing office actions or oppositions). A proof of use can be an image of the trademark on the product, or an active website selling to U.S. customers.

 

1b (Intent to Use) – You must provide proof of use (Statement of Use or SOU) of the mark in the US within 3 years after the date the mark reaches Notice of Allowance (NOA) or becomes “accepted”.  NOA is a status reserved for Intent to Use applications and means that the 1b classes on the mark are tentatively approved to be registered pending the filing of a proper and approved SOU. 

 

44d (Foreign Application) – Within 6 months of filing a foreign application, you can use that filing as a basis for filing a US application.  You can only claim priority in a US application for those classes filed in the foreign application.  To add classes to a US application that aren’t covered in the foreign application, these additional classes must be filed under an “Actual Use” or “Intent to Use” basis.  Once the US application has been examined, it is suspended pending receipt of the foreign registration certificate.  If the foreign registration fails (or is going to take years to process), the 44d basis can be substituted with a 1a or 1b basis.  This means that you are no longer using the foreign application as the basis for approving your trademark… you will have to show US based use.  A big advantage to a 44d/44e approach is that you don’t have to show use in the US to get your initial registration (you do have to show use for the Section 8 and Section 8/9 renewals).  Once a foreign registration certificate is filed, the mark is re-examined to make sure that the classes claimed on the foreign registration match the US application.  If they don’t match, an office action will be issued.

 

44e (Foreign Registration) – At any time after a foreign trademark has registered, it can be used as the basis of a US filing (44e).  Just like a 1a, proof is required at the time of filing, but instead of proving use, it requires the foreign registration certificate.  Just like a 44d, you can only claim priority in a US application for those classes filed in the foreign registration.  To add classes to a US application that aren’t covered in the foreign registration, these additional classes must be filed under an “Actual Use” or “Intent to Use” basis.  Otherwise, processing of a 44e continues much like a 1a basis.  Again, a big advantage to 44e is that you don’t have to show use in the US to get your initial registration (you do have to show use for the Section 8 and Section 8/9 renewals).  IMPORTANT NOTE – Having a foreign registration DOES NOT guarantee US registration… the mark is still examined and may be rejected due to prior US filings, differences in US trademark laws (i.e. filing of surnames is allowed in some foreign countries, but not in the US).

 

Marcaria.com

Should you have any additional questions about your own trademark registration process in the USA and application type, please feel free to email your personal Account Manager and we will respond within 12 business hours.

To proceed to our US trademark registration page, please click here

Section 1a Use in Commerce: Application Timeline

Please note the following graphic and text have been replicated from the United States Patent and Trademark Office at the following link: http://www.uspto.gov/trademarks/process/tm_sec1atimeline.jsp

 

Step 1. Application filed: The filed application is assigned a serial number. This number should always be referenced when communicating with the USPTO. Approximately 3 months go to step 2.

 

Step 2. USPTO reviews application: If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month go to step 3a or step 3b.

 

Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 3b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement. Within 6 months go to step 4aor step 4b.

 

Step 4a. Applicant timely responds: In order to avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. Approximately 1 to 2 months go to step 5aor step 5b.

 

Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are NOT refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 5a. USPTO publishes mark: If the applicant's response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 5b. USPTO issues final letter (Office action): If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.

 

Step 6a. Applicant timely responds and/or files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “Final” refusal letter (Office action). Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 7a or step 7b.

 

Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued and the applicant has not filed a Notice of Appeal to the Trademark Trial and Appeal Board, the application is abandoned. The term “abandoned” means that the application process has ended and trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date, with the appropriate fee. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 7a. USPTO publishes mark: If the applicant's response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to public that USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 7b. Applicant's appeal sent to TTAB: If the applicant's response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.

 

Step 8. Mark registers: Within approximately 3 months after the mark published in the Official Gazette, if no opposition was filed, then the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board dismisses the opposition. After a registration issues, to keep the registration “alive” the registrant must file specific maintenance documents. Between 6 to 7 years go to step 9 and every 10 years go to step 10.

 

Step 9. Registration owner files Section 8 declaration: Before the end of the 6-year period after the registration date, or within the six-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.

 

Step 10. Registration owner files Section 8 declaration/Section 9 renewal: Within one year before the end of every 10-year period after the registration date, or within the six-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 & 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.

 

Marcaria.com

If you have already filed your application with the USPTO and require assistance with any of the further steps or would like a quotation for a new filing please contact us at Forum@Marcaria.com.  To visit our USA registration page please click here

Section 1b Intent to Use: Application Timeline

Please note the following graphic and text have been replicated from the United States Patent and Trademark Office at the following link: http://www.uspto.gov/trademarks/process/tm_sec1btimeline.jsp

Step 1. Application filed: The filed application is assigned a serial number. This number should always be referenced when communicating with the USPTO. Approximately 3 months go to step 1.

 

Step 2. USPTO reviews application: If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month go to step 3a or step 3b.

 

Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 3b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement. Within 6 months go to step 4aor step 4b.

 

Step 4a. Applicant timely responds: In order to avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. Approximately 1 to 2 months go to step 5a or step 5b.

 

Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are NOT refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 5a. USPTO publishes mark: If the applicant's response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 5b. USPTO issues final letter (Office action): If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.

 

Step 6a. Applicant timely responds and/or files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “Final” refusal letter (Office action). Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant\'s response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 o 2 months go to step 7a or step 7b.

 

Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued and the applicant has not filed a Notice of Appeal to the Trademark Trial and Appeal Board, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date, with the appropriate fee. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 7a. USPTO publishes mark: If the applicant's response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

 

Step 7b. Applicant's appeal sent to TTAB: If the applicant's response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.

 

Step 8. Notice of Allowance (NOA) is issued: A NOA is issued to the applicant within 3 months after the mark is published in the Official Gazette. The NOA is not a registration, but indicates that the mark will be allowed to register after an acceptable Statement of Use (SOU) is filed. The deadline for filing an SOU or request for extension of time (extension request) to file an SOU is calculated from the date the NOA issued. If the applicant does not file an SOU or extension request within 6 months of the date the NOA issued, the application will abandon. Within 6 months go to step 9a or step 9b or step 9c.

 

Step 9a. Applicant files extension request: If the applicant is not using the mark in commerce on all of the goods/services listed in the NOA, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the NOA and subsequent requests before the expiration of a previously granted extension. Before the end of 30 months go to step 10.

 

Step 9b. Applicant timely files Statement of Use (SOU): If the applicant is using the mark in commerce on all of the goods/services listed in the NOA, the applicant must submit an SOU and the required fee(s) within 6 months from the date the NOA issued to avoid abandonment. Applicant cannot withdraw the SOU; however, the applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU. No further extension requests may be filed. Approximately 1 month go to step 11.

 

Step 9c. Applicant does not timely file SOU or extension request: application abandons: If the applicant does not file an SOU or extension request within 6 months from the date the Notice of Allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date.

 

Step 10. Applicant timely files SOU after requesting extensions: If the applicant is using the mark in commerce on all the goods/services listed in the NOA, the applicant must submit an SOU and the required fee(s) within 6 months from the previous extension to avoid abandonment. Applicant cannot withdraw the SOU; however, the applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU. No further extension requests may be filed. Go to step 11.

 

Step 11. USPTO reviews SOU: If the minimum filing requirements are met, the SOU is forwarded to the examining attorney. The examining attorney conducts a review of the SOU to determine whether federal law permits registration. The applicant cannot withdraw the SOU and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month go to step 12a or step 12b.

 

Step 12a. SOU is approved and mark registers: If no refusals or additional requirements are identified, the examining attorney approves the SOU. Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration "live," the registrant must file specific maintenance documents. Between 5 to 6 years go to step 13 and every 10 years go to step 14.

 

Step 12b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the SOU is approved, the USPTO issues a registration within approximately 2 months. If all issues are not resolved, the application will abandon.

 

Step 13. Registration owner files Section 8 declaration: Before the end of the six-year period after the registration date, or within the six-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.

 

Step 14. Registration owner files Section 8 declaration / Section 9 renewal: Within one year before the end of every 10-year period after the registration date, or within the six-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.

 

Marcaria.com

If you have already filed your application with the USPTO and require assistance with any of the further steps or would like a quotation for a new filing please contact us at Forum@Marcaria.com.  To visit our USA registration page please click here

Section 44d Based on Foreign Application: Application Timeline

Please note the following graphic and text have been replicated from the United States Patent and Trademark Office at the following link: http://www.uspto.gov/trademarks/process/tm_sec44dtimeline.jsp

Step 1. Application filed: The applicant filed its U.S. application within 6 months of filing its foreign application in a country that is party to a treaty or agreement with the United States. The applicant’s country of origin must also be a party to a treaty or agreement with the United States. However, the foreign application relied upon does not have to be from the applicant’s country of origin. Section 44(d) alone does not provide a basis for publication or registration and the applicant must later provide a Section 1(b), Section 1(a), and/or Section 44(e) basis. Approximately 3 months go to step 2.

 

Step 2. USPTO reviews application: If the minimum filing requirements for the U.S. application are met, the application is assigned to an examining attorney to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month go to step 3a or step 3b.

 

Step 3a. USPTO issues suspension letter: If no refusals or requirements are identified, the examining attorney issues a letter suspending the action pending the submission of the foreign registration certificate and an English translation thereof. Go to step 5.

 

Step 3b. USPTO issues a letter (Office action): If the examining attorney identifies any refusals or requirements, the examining attorney issues a letter (Office action). Within 6 months of the issue date of the Office action, the applicant must submit a response that addresses each refusal and/or requirement. Within 6 months go to step 4a or step 4b.

 

Step 4a. Applicant timely responds: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response and will issue a letter suspending the application pending submission of the foreign registration certificate and English translation thereof and continuing any refusals and/or requirements. No action by the applicant, other then periodic status checks every 3 – 4 four months of the U.S. application (see http://tarr.uspto.gov), is required until the examining attorney issues a letter inquiring as to the status of the foreign application. Within 1 to 2 months go to step 5.

 

Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 5. U.S. application suspended: No action by the applicant, other then periodic status checks every 3 – 4 months of the U.S. application (see http://tarr.uspto.gov), is required. The application remains suspended until the examining attorney issues a letter inquiring as to the status of the foreign application. Approximately 6 months go to step 6.

 

Step 6. USPTO issues suspension inquiry: If the foreign registration certificate has not been submitted, the examining attorney will issue a letter inquiring as to the status of the foreign application. This cycle will continue every 6 months until the applicant submits its foreign registration certificate and English translation thereof. Within 6 months go to step 7a or step 7b or step 7c.

 

Step 7a. Applicant timely responds and does not submit foreign registration certificate: To avoid abandonment of the application, the applicant must submit a timely response indicating the status of the foreign application. If the foreign application is still pending, the examining attorney will issue a letter re-suspending the U.S. application. Go to step 5.

 

Step 7b. Applicant timely responds and submits foreign registration certificate: When the applicant has submitted its foreign registration certificate and English translation thereof, the U.S. application is removed from suspension and the examining attorney reviews the foreign registration to determine if the mark, owner, and goods/services agree with those in the U.S. application. Approximately 1 to 2 months go to step 8a or step 8b or step 8c.

 

Step 7c. Application does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 8a. USPTO publishes mark: The examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 11.

 

Step 8b. USPTO issues final letter (Office action): If the foreign registration certificate is acceptable but previously raised issues remain, the examining attorney will issue a “final” Office action to which the applicant must respond within 6 months, an applicant may respond to a final Office action by (a) overcoming the refusals and complying with the requirements, or (b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 9a or step 9b.

 

Step 8c. USPTO issues letter (Office action): If the foreign registration is not acceptable, the examining attorney will issue a letter (Office action) to which the applicant must respond within 6 months. Within 6 months of the issue date of the Office action, the applicant must submit a response that addresses each refusal and/or requirement. Within 6 months go to step 8c-1 or step 8c-2.

 

Step 8c-1. Applicant timely responds: In order to avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. Approximately 1 to 2 months go to step 8c-1a or step 8c-1b.

 

Step 8c-2. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and trademark will not register. Filing fees are refunded when applications abandon. Abandoned “dead,” since they no longer pending or under consideration for approval. To continue process, applicant must file a petition revive within 2 months of abandonment date. If more than after date, be denied as untimely new with appropriate fee(s).

 

Step 8c-1a. USPTO publishes mark: The examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Within 6 months go to step 9a or step 9b.

 

Step 8c-1b. USPTO issues final letter (Office action): If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Approximately 3 months go to step 11.

 

Step 9a. Application timely responds / Files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “final” Office action. Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 10a or step 10b.

 

Step 9b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 10a. USPTO publishes mark: If the applicant’s response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 11.

 

Step 10b. Applicant’s appeal sent to TTAB: If the applicant’s response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.

 

Step 11. Mark registers: Within approximately 3 months after the mark published in the Official Gazette (OG), if no opposition was filed, the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board dismisses the opposition. After a registration issues, to keep the registration “alive,” the registrant must file specific maintenance documents. Between 5 to 6 years go to step 12 or every 10 years go to step 13.

 

Step 12. Registration owner files section 8 declaration: Before the end of the 6-year period after the registration date, or within the 6-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.

 

Step 13. Registration owner files section 8 declaration/section 9 renewal: Within 1 year before the end of every 10-year period after the registration date, or within the 6-months grace period thereafter, the registration owner must file a Combined Declaration

 

Marcaria.com

If you have already filed your application with the USPTO and require assistance with any of the further steps or would like a quotation for a new filing please contact us at Forum@Marcaria.com.  To visit our USA registration page please click here

Section 44e Based on a Foreign Registration: Application Timeline

Please note the following graphic and text have been replicated from the United States Patent and Trademark Office at the following link: http://www.uspto.gov/trademarks/process/tm_sec44etimeline.jsp

 

Step 1. Application filed: The applicant files its U.S. application and relies on ownership of a foreign registration. The foreign registration does not have to be submitted with the U.S. application, but when the foreign registration is submitted it should meet all of the following criteria: 1) issued by a country that is a party to a treaty or agreement with the United States; 2) from the applicant’s country of origin; 3) owned by the applicant that filed the U.S. application; 4) the mark must be the same as the mark in the U.S. application; and 5) the goods/services must encompass the goods/services in the U.S. application. Approximately 3 months go to step 2.

 

Step 2. USPTO reviews application: If the minimum filing requirements for all applications are met, the application is assigned to an examining attorney who determines whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 to 2 months go to step 3a or step 3b.

 

Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified and the foreign registration certificate and English translation thereof was included in the application, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.

 

Step 3b. USPTO issues letter (Office action): If refusals or requirements are identified the examining attorney issues a letter (Office action) requiring the applicant to address the issues. For example if the U.S. application does not meet the 44(e) requirements the applicant must either correct the deficiencies or provide another filing basis, such as Section 1a (use in commerce) or Section 1b (intent to use). Additionally, if the application fails to provide a foreign registration certificate, the examining attorney will require the application to submit a foreign registration certificate and English translation thereof. Applications are not suspended pending submission of a copy of the foreign registration certificate, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). Within 6 months go to step 4a or step 4b.

 

Step 4a. Applicant timely responds: In order to avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If an applicant fails to submit a copy of the foreign registration certificate in its response, the applicant has failed to respond to an outstanding requirement. Accordingly, the examining attorney will issue a “final” Office action. The Office action makes final any remaining refusals or requirements. An applicant may respond to a final office action by (a) overcoming the refusals and complying with the requirements, or (b) appealing to the Trademark Trial and Appeal Board. Within 1 to 2 months go to step 5a or step 5b.

 

Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office Action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 5a. USPTO publishes mark: If the applicant’s response overcomes the refusals and/or satisfies all requirements including the submission of the foreign registration certificate and English translation thereof, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.

 

Step 5b. USPTO issues final letter (Office action): If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.

 

Step 6a. Applicant timely responds / Files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “final” Office action. Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 7a or step 7b.

 

Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office Action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

 

Step 7a. USPTO publishes mark: Applicant has satisfied all the refusals and/or requirements. Accordingly, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.

 

Step 7b. Applicant’s appeal sent to TTAB: If the applicant’s response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of appeal with the Trademark trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.

 

Step 8. Mark registers: Within approximately 3 months after the mark published in the Official Gazette (OG), if no opposition was filed, then the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board (TTAB) dismisses the opposition. After a registration issues, to keep the registration “alive,” the registrant must file specific maintenance documents. Between 5 to 6 years go to step 9 or every 10 years go to step 10.

 

Step 9. Owner Files Section 8 declaration: Before the end of the 6-year period after the registration date, or within the 6-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.

 

Step 10. Owner files Section 8 declaration and Section 9 renewal: Within 1 year before the end of every 10-year period after the registration date, or within the 6-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.

 

 

 

Marcaria.com

 

If you have already filed your application with the USPTO and require assistance with any of the further steps or would like a quotation for a new filing please contact us at Forum@Marcaria.com.  To visit our USA registration page please click here

Will the USPTO contact me directly and request payment?

No. If you have requested your application through Marcaria.com the contact for the USPTO will be one of our legal representatives. The legal representatives filter all communication and your Account Manager will always inform you of any relevant action necessary or payments required. The USPTO will never contact you directly.

With this in mind, note that there are companies that attempt to scam users by searching the USPTO database and contacting the owners of trademarks directly and seeking payment. If you have received a notification such as this do not hesitate to contact your Account Manager to confirm or disregard the notice if you are certain it is not from the USPTO but from a company trying to mimic the government entity.

To see the official USPTO notice regarding these unofficial information and payment requests please see the attachment to this article. 

Trademark Registration Cost

Trademark registration fees are based on a number of variables.  In general, registering your trademark will require you to pay a series of fees include a search fee, a filing fee and an examining fee.  Those fees vary depending on the way in which the mark is being registered, the applicant registering the mark and the number of marks being submitted, the number of classes of goods / services in the application.

The registration of trademark is a legal process and is not automatic.  Applications are thoroughly reviewed by an examining attorney. As such, fees submitted during the registration process are generally not refundable even if a registration is not eventually granted for a mark.  Do your own due diligence and make sure that your application is complete and that a preliminary search has been done using the Trademark Electronic Search System (TESS).

Registration Filing Fees

Filing your trademark registration by mail or in person is going to be more expensive than submitting a digital application.  The cost of filing a paper application is $375 per international class.  There are two basic types of digital trademark registration forms that can be submitted - TEAS Plus and regular TEAS. TEAS Plus has a filing fee of $275, but has stricter filing requirements.  The TEAS regular has a filing fee of $325 per class of goods or services.  For companies that are eligible for small entity status under 37 CFR 1.27(a), filing fees can be reduced by 50%.

Trademark Classification

Each trademark registration is submitted to correspond with a particular classification. The Committee of Experts of the Nice Union publishes the International Classification of Goods and Services for the Purposes of Registration of Marks.  If your mark(s) is being used in more than one classification - for instance a brand of home goods that includes both candles (class 4) and paints (class 2) – you will be required to remit filing fees for both classes.  In the same way, if you have multiple marks for which you would like to receive trademark protection, each mark must be registered separately and fees submitted with each one.

Methods of Payment

There are several ways to pay for your trademark application.  All TEAS forms accept payments made by VISA, MasterCard, Discover, and American Express. USPTO prepaid deposit accounts can be established and maintained for a fee.  You also have the option to set up an Electronic Funds Transfer (EFT) account that links directly to your bank before filing your trademark registration.   If you have submitted your paper application via U.S. mail or in person, you can pay using a check or money order, or by submitting a Credit Card Payment Form.  Checks and money orders should be made payable to the “Director of the U.S. Patent and Trademark Office.”  Please note that there is a $50 fee for any returned check.

Other Applicable Trademark Forms

The Trademark / Servicemark Application, Supplemental Register can be used to register marks that are already being used in commerce and that are not eligible for registration with the Principal Register.  You may also be in need of other services available through the Trademark Office such as certifications of trademark applications, renewal applications, forms to correct previous filings and general labor charges for searches and copy services.  Each of the aforementioned fees can be found on the USPTO’s fee schedule.  The new fees are effective October 5, 2012.

 

Advantages of using Marcaria.com services:

Marcaria.com offers the service of trademark filing on your behalf, and charges USD 240 per class per mark.

  • Experienced attorneys will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of trademark.
  • Each client has their own Account Manager who personally oversees the client's portfolio. The Account Manager is the go-to contact for the client for any trademark needs they may have.
  • The client's portfolio is supported by his/her account on our website which clearly shows the latest information and statuses of all trademarks the client holds.

In order to send you a full quotation for Trademark Registration in the United States please email Forum@marcaria.com and we will reply within 12 business hours or visit our website here to place your order. 

Exporting to USA: Start by Registering your Trademark

Exporting to USA: Start by Registering your Trademark

If you are planning to export a product or service to the USA, it is extremely important that you first conduct research about the brand (name, term, sign or symbol) that you intend to use.

This way you will avoid using a trademark that is already being used, potentially leading to legal problems. After the research of the brand is completed, it is advisable that you register your name or logo as a trademark promptly to avoid having the brand be registered by someone else.

Benefits of registering a U.S. Federal Trademark:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in Federal court;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases

Trademarks are registered in classes (group of products/services), and the cost of registering a trademark is per class. The United States Patent and Trademark office charges USD 325 per class per mark.

Marcaria.com offers the service of trademark filing on your behalf, and charges USD 240 per class per mark.

Advantages of using Marcaria.com services:

  • Experienced attorneys will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of trademark.
  • Each client has their own Account Manager who personally oversees the client's portfolio. The Account Manager is the go-to contact for the client for any trademark needs they may have.
  • The client's portfolio is supported by his/her account on our website which clearly shows the latest information and statuses of all trademarks the client holds.

In order to send you a full quotation for Trademark Registration in USA please email us at info@marcaria.com and we will answer within 12 hours. 

How to Complete an Online Trademark Registration

 

Filing an online trademark registration is done using the Trademark Electronic Application System (TEAS).  Before getting started on your trademark registration, the first thing you want to do is search the proposed mark in the U.S. Patent and Trademark Office (USPTO) database using the Trademark Electronic Search System (TESS).  Doing this at the onset helps you to make sure that no one else already claims the rights to the mark you are registering. It is a good idea to seek the advice and help of a registered trademark attorney very early on in this process.

By submitting an application, you are assuring the USPTO that you have the authority to grant the USPTO permission to make the information contained in the application publicly available in the online database and in copies of application record.  Applications for trademarks are a matter of public record, meaning once your application has been submitted your name, phone number, email address and physical address will become searchable both in the USPTO’s database and online whether the application remains active, is cancelled or abandoned.  To protect yourself, be sure to only enter your banking information in the secure part of the site after validating your form. 

You can check the Current Server and Planned Outages page to make sure the TEAS is fully functional.  This page will tell you the current status of the systems as well as the next scheduled time and date for system maintenance.  If you plan to pay for your trademark by Electronic Funds Transfer (EFT) directly from your bank, you will need to set up your EFT account before you begin the filing process.  It can take up to 8 days to completely set up your EFT account.

Types of Trademark Forms

The Initial Application Form is the form you will use to apply for a trademark, service mark or other type of mark.  There are two forms that can be used to register marks with the Principle register. Use the TEAS regular form if you are unable to fulfill all the requirements of the TEAS Plus form. Use the Trademark / Servicemark Application, Supplemental Register form for marks that are not eligible for registration with the Principal Register. Whereas with the TEAS and TEAS Plus form you can apply for trademark protection for marks you intend to use in the future, in order to file an Application for Supplemental Register, you must already be using the mark in commerce.

Between the time you submit your application and the time your trademark is approved, you will receive correspondence from the USPTO either to your email address or the physical address on file.  Physical mail will always contain an official USPTO seal.  Emails will be from an address “@uspto.gov.”  You can submit responses using online Response Forms. Be sure to use the Change of Address Form to keep your email address and mailing address on file up to date in the event your contact information changes.

The trademark process is a complex and time-sensitive one.  There are several types of forms that will be useful to you during the life of your trademark. Carefully follow the instructions for filing your trademark registration as well as any related correspondence forms associated with establishing, maintaining or even cancelling your mark.  Doing so will help to ensure that you are provided the most protection for your intellectual property.

 

Advantages of using Marcaria.com services:

Marcaria.com offers the service of trademark filing on your behalf, and charges USD 240 per class per mark.

  • Experienced attorneys will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of trademark.
  • Each client has their own Account Manager who personally oversees the client's portfolio. The Account Manager is the go-to contact for the client for any trademark needs they may have.
  • The client's portfolio is supported by his/her account on our website which clearly shows the latest information and statuses of all trademarks the client holds.

In order to send you a full quotation for Trademark Registration in the United States please email Forum@marcaria.com and we will reply within 12 business hours or visit our website here to place your order. 

How do I submit a Statement or Declaration of Use?

A Statement or Declaration of Use should be submitted if your original trademark application was submitted with an intent-to-use designation (application type 1b), meaning when you applied for your mark, it wasn’t in commercial use yet.  When that is the case, the Trademark Office will send you a Notice of Allowance. You have six months from the date on the Notice of Allowance to file a Statement of Use demonstrating that you are actively using the mark in order for the trademark to be registered. 

The Statement of Use is a sworn statement informing the Trademark Office of the specific date you began using the mark anywhere in theU.S., the specific date on which you began using the mark in interstate commerce, and an example of the actual use of the mark. Such an example of use can include product labels and packaging, pictures of products, ads, brochures or flyers displaying the mark.  

 

Marcaria.com

Once your trademark filed as "Intent-to-Use" becomes accepted, we notify you that it is now time to file a Specimen of Use.  At this point, we typically request the "specimen" which would be an image showing your trademark in use.  This Specimen can be a website, label, brochure, screenshot, etc.  Our attorneys will verify whether they believe the Specimen of Use is sufficient and will provide feedback. The fee to submit the Statement of Use is USD 300 for a wordmark or logo, and USD 600 for a wordmark and logo, per class. All of our fees include official USPTO fees. 

If you would like Marcaria.com's assistance in filing a Statement of Use or applying for an Extension of Time please email us at info@marcaria.com and we will respond to you within 12 business hours.

What is a Statement of Incontestability?

A Statement of Incontestability is one filed by the owner of a mark registered on the Principal Register.  The statement serves as evidence that the mark and/or its registration is valid and that the trademark owner reserves the exclusive right to use the mark on goods and services.  In order for a trademark to meet the requirements of being considered “incontestable,” it must have been used in commerce continuously for at least five years after the registration and must still be in use at the time the Statement of Incontestability is filed.

 

I want to Cancel or Annul a Trademark

The USPTO will cancel a trademark usually for a lack of use or by request.  Between the fifth and sixth years after a trademark has been registered, the owner will be required to file maintenance documentation with accompanying fees.  Failure to do so will render a trademark abandoned and the trademark registration will be automatically cancelled by the USPTO for a lack of use.  If a party contests the use of a trademark in commerce because its use causes damage to the one contesting the mark, the USPTO will allow the one contesting the use of a mark to file a Petition to Cancel the trademark.  If the cancellation petition goes uncontested, the mark will be cancelled.

 

My Trademark was Cancelled, what can I do?

There are multiple ways to cancel a trademark and subsequently, there are multiple options to exercise once a trademark has been cancelled:

  • If a trademark is cancelled because an owner failed to submit scheduled maintenance documentation and accompanying fees for an existing mark, the owner may not later request that the mark is reinstated. The owner must file a new trademark application. 
  • If a trademark owner can prove that a trademark cancellation is the result of an error on the part of the Trademark Office, the owner can ask to have a mark reinstated or file a petition with the Director of the Trademark Office.  Such an error would include failure on the part of the USPTO to make appropriate changes after receiving written notice of an address change.
  • If a trademark cancellation is the result of a third party petition to cancel an existing registration of a mark, the trademark owner can contest the petition and request that the mark is reinstated. 
  • If a trademark owner submits the appropriate documentation and a trademark is cancelled because such documentation is not received in the Trademark Office, the owner can ask to have the trademark reinstated if the owner is able to provide proof that the documentation was sent and the error lies either with the letter courier or the USPTO.
 
My Trademark was Abandoned, how can I revive it?

An abandoned trademark application is one that has gone from pending to inactive status due to a failure to either respond to Office action, a failure to file a Statement of Use in a timely manner, or for an incomplete response.  While your application is pending, an examining attorney will send an Office action letter that will require you to issue a response within six months from the mailing date on the letter.  If you do not respond within that six month time frame, your application will be deemed abandoned and you can submit a Petition to Revive your trademark application if the failure to respond was unintentional.  If the Abandonment is the result of a failure to file a Statement of Use, the owner can file a Petition to Revive the application along with a petition fee if the failure to submit documentation was unintentional. In the case of submitting an incomplete response to an examining attorney’s Office action, the trademark owner can file a petition if the Petitioner can demonstrate that the examining attorney is in error for holding the application abandoned.

 

If my trademark expires, do I have a grace period?

Yes, you still have 6 months to renew your trademark once it has expired.

When should I renew my trademark?

Renew it every 10 years.

Is there any documentation that should be presented when renewing a trademark?

Yes. When you renew your trademark, you will need to bring a proof of use, declaration of use and power of attorney (If the Attorney is a new one)

US Trademark Renewal

 

US Trademark registrations are valid for 10 years.  If you wish to keep validity of your trademark you must file a trademark renewal application in conjunction with a Declaration of Use.

These applications should be filed before the United States Patent and Trademark Office (USPTO) between the ninth and tenth year after registration date. Please notice that if you have passed the deadline, there is a six months grace period in which you may still file your application for an additional fee. Once the grace period is passed, your registration will be cancelled and cannot be revived or reinstated.

If you wish to proceed with the renewal of your trademark in US with Marcaria.com, the cost for the renewal service is USD 810 per the first class and USD710 for each additional class within the renewal period. This service includes paying for the renewal fees and performing all the necessary tasks.

Advantages of using Marcaria.com services include:

 -          Experienced attorneys that will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of Renewal Application.

-          Each client has their own Account Manager who personally oversees the client's portfolio. The Account Manager is the go-to contact for the client for any trademark needs they may have.

-          The client's portfolio is supported by his/her account on our website which clearly shows the latest information and statuses of all trademarks the client holds.

In order to send you a full quotation for Declaration of Use and Trademark Renewal in the U.S. please contact us at support@marcaria.com and we will reply within 24 business hours.

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