United States Trademark Search & Registration

U.S. Trademark Search

Search your trademark within the United States Trademark Office. Search by Trademark Name, Number or Applicant

Trademark Class Search
Frequently Asked Questions
What is the USPTO?

The United States Patent and Trademark Office is the agency of the Department of Commerce in charge of granting patents and registering trademarks in the U.S. 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 

 

What is the web address of the trademark national office?
What are the Types of Trademark Filing Forms in the US?

 

There are two forms that can be used to register marks with the Principle register: the TEAS regular form, if want to use a personalized description, or the TEAS Plus form.

Between the time you submit your application and the time your trademark is approved, you will receive correspondence from the USPTO through your attorney. In case you change your email address, be sure to update it in your Marcaria.com account to receive all the notifications.

The trademark process is a complex and time-sensitive one. During the life of your trademark, the USPTO will require to fill out different types of forms. Your attorney will assist you and reply 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.

  • Experienced attorneys will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of trademark.
  • 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 [email protected] and we will reply within 1 business day or visit our website here to place your order. 

1a, 1b, 44d, 44e, Intent to Use, Actual Use: Application Filing Basis

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) – If the trademark is not being used in commerce in the USA, proof of use will have to be presented at an additional fee to finalize the registration process. You must provide proof of use (Statement of Use or SOU) of the mark in the US within 6 months 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. If you cannot provide proof of use within that 6-month period, you may request a 6-month extension (Extension to File SOU) by paying additional fees. You can request up to 5 extensions. However, by no later than 3 years from the NOA date, you must file an SOU. Failure to do so will result in your mark being abandoned.

 

44d (Foreign Application) – Within 6 months of filing a foreign application, in a country where you are domiciled, have a bona fide and effective industrial/commercial establishment, or are national, 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 a copy of the actual foreign registration certificate; printouts from foreign intellectual property office are not acceptable.  Also, you must provide a signed translation of your foreign registration certificate if it isn’t in English; a certificate translation is not required, just that the translation is complete and signed.  In addition, you must be able to prove that you are domiciled, have a bona fide and effective industrial/commercial establishment, or are national in the country where the trademark is registered.  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 1 business day.

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: https://www.uspto.gov/trademark/trademark-timelines/section-1a-timeline-application-based-use-commerce

 

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 [email protected].  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: https://www.uspto.gov/trademark/trademark-timelines/section-1b-timeline-application-based-intent-use

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 [email protected].  To visit our USA registration page please click here

Section 44d Based on Foreign Application: Application Timeline

Please note the following graphic and text are based on content published by the United States Patent and Trademark Office at the following link: https://www.uspto.gov/trademark/trademark-timelines/section-44d-timeline-application-based-foreign-application

Section_44_d__timeline___USPTO.jpg

 

 

 

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, 7b, 7c or 7d.

 

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. Applicant changes Filing Basis: If you do not want to wait on the foreign registration to occur, you may retain the priority of your foreign application filing date and change the application filing basis of your mark to “Actual Use” or “Intent to Use”.  If you change to “Actual Use”, you must provide specimens of use for each class of your mark at the time you make such change (IMPORTANT - all specimens must represent use within the United States; sales outside the United States are not applicable).  If you change to “Intent to Use”, your mark be treated as if you had filed on that basis to begin with.  Once changed, you cannot use your foreign registration certificate.  Additional USPTO and attorney fees will apply for such changes.

 

Step 7d. 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 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 [email protected].  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: https://www.uspto.gov/trademark/trademark-timelines/section-44e-timeline-application-based-foreign-registration

 

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 [email protected].  To visit our USA registration page please click here

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 study first if the mark accomplishes 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. After this stage, the registration will be granted.

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.

How do I submit a Statement or Declaration of Use?

 

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.  

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 [email protected] and we will respond to you within 1 business day.

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.

 

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
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.

 

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 receive all communication and will always inform you of any relevant action necessary or payments required, through your Account Manager. 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. 

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 respond to a Non-Final Letter through your representative.

A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. If you receive a Final Action Letter, you can either follow the conditions in the correspondence or file an appeal with the Trademark Trial and Appeal Board. 

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.
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.  The fees vary depending on 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. 

Registration Filing Fees

There are two basic types of digital trademark registration forms that can be submitted - TEAS Plus and regular TEAS. TEAS Plus has a lower fee but has stricter filing requirements. 

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 clients can pay for trademark application and our services.  We accept payments made by credit card (VISA, MasterCard, Discover, American Express), PayPal, bank transfer or check to our US bank account.

Other Applicable Trademark Forms

You may also be in need of other services available, such as certifications of trademark applications, renewal applications, forms to correct previous filings, among others. In order to know the fees for these services, contact us and request a quotation. 

Advantages of using Marcaria.com services:

Marcaria.com offers the service of trademark filing on your behalf.

  • Experienced attorneys will help you avoid many potential pitfalls that may occur in the process that could lead to the rejection of trademark.
  • 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 [email protected] and we will reply within 1 business day 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.

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.
  • 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 [email protected] and we will answer within 1 business day. 

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