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Trademark Renewal
In United States in order to maintain the validity of a trademark registration you must renew it every 10 years. The renewal process is fairly simple, you will need to provide trademark registration details and send us a power of attorney.
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Applications are handled by experienced local Trademark Attorneys to ensure that all legal requirements are met.
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If your trademark application is rejected, our Attorneys will inform you and advise you on the best course of action.
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A dedicated Account Manager will act as your point of contact for all communications.
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 Frequently Asked Questions
Trademark Registration
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What is the time frame for the trademark registration approval?

The average time frame for the trademark registration approval in the U.S. is 10 months, if no objections or oppositions arise.

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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. 

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When filing a logo or combined mark application in the USA, should I claim color?

The following factors must be taken into consideration when deciding whether or not to claim color in a logo application: the scope of protection you desire and the importance of the specific color(s) in terms of the image of your brand.

If no color claim is made, your logo is submitted in black and white and it is presumed to cover all colors. The benefits of not claiming color include a greater scope of protection of the shape of your mark and the flexibility of being able to use your logo in different color schemes, while still maintaining the protection. This option is advisable if the specific color(s) of your logo is not vital for the brand image.

On the other hand, if the colors of your logo are fundamental, and your customers recognize your brand because you use particular colors, it may be more suitable to claim the colors of your logo as a feature of the mark.  Claiming color implies a more limited scope of protection to the specific colors you claim, but it entails a higher degree of protection over the color itself (similar marks have a lower probability of co-existing if they are in the same colors). If you choose to claim color, your application must describe where each color appears in the mark.  Black, white, or gray can be used as claimed features of the mark or to indicate areas that are not part of the mark, such as background, transparent areas, shading, etc.

For ideal protection, as some big companies do, it would be advisable to file two applications: one black and white logo without claiming color to better protect the shape of your mark, and one-color logo with a color claim to assure protection of the mark with the particular colors you use.

 

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What are the requirements for an acceptable specimen or proof of use?

A specimen or proof of use is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace, with the goods or services included in its description.

The USPTO requirements for proofs of use are:

  • Be a real example of how you use your trademark in commerce in providing your goods or services (not a mock up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).
  • Show your trademark used with the goods or services listed in your application.
  • Depict the same trademark as shown on your drawing.
  • Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
  • Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
  • Show your trademark used in a way that directly associates the mark with the goods or services.
  • Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark).
  • Include the URL and date you accessed or printed the webpage in your submission.

Some proof of use examples for goods are a photograph, scanned copy, screen capture, or printout of:

  • The goods themselves, showing your mark.
  • Labels and tags for the goods, showing the mark, with informational matter that typically appears on a label in use in commerce for those types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.
  • Packaging for the goods, showing the mark.
  • Sales displays where the goods are sold, showing the mark.
  • Webpages selling the goods, showing the mark on or in close proximity to the goods, the price, and a shopping-cart button. In your screenshot or printout, you must include the URL and date you accessed or printed the webpage.
  • For software as goods, a screenshot of the software launch screen showing the mark or a screenshot of a webpage with enough information to download the software and the mark appearing in the title bar.

Some proof of use examples for services are:

  • Online advertising or printed matter showing a direct link association between your trademark and the services.
  • Television and radio commercials for the services.
  • Marketing material showing a direct association between your trademark and the services (brochures or leaflets advertising your service).
  • Signage where the services are rendered.
  • Material used in the providing/rendering of the services.
  • Invoices showing a direct association between your trademark and the services.
  • Business cards and letterhead showing a direct association between your trademark and the services.

To see images of some of these examples of acceptable proofs of use, visit the USPTO’s webpage “Specimens”.

It is important to review  the requirements and examples since the USPTO is becoming stricter when it comes to the proofs of use. 

Examiners may visit the websites from which the specimens have been obtained to verify that goods and services are real and currently available to the American consumer.

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When is it required to inform the translation and transliteration of a trademark in the USA?

An application to register a mark that comprises non-English wording must include an English translation of that wording. This requirement also applies to trademarks comprised of two or more distinct words that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term in the other language. For example, the English equivalent of the phrase "mais oui" in French is "why, certainly," or "why, of course,", and not the literal translation "but yes."

If the trademark also includes non-Latin characters, a transliteration of those characters must be included along with the translation. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. For example, the transliteration of the Chinese character “文” is “Wen” and it means “culture, writing” in English.

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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.

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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.

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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.

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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.

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.

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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.

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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. 

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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
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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
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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." If you order a Comprehensive Study in the USA, within the study our attorney will recommend the description that should be included in the trademark registration request.

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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.

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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 between the 5thand 6th year after the date of registration. Failure to comply will result to cancelled registration.

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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.

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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.

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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 the 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.

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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 can 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.     

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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 want to oppose the registration of a trademark, you must file a notice of opposition with the USPTO as the opposer. The document must explain why 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. We recommend you to hire a trademark attorney to file a Notice of Opposition, because trademark opposition hearings are legal proceedings.

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What will be the renewal date of my trademark?

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

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What is the web address of the trademark national office?

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

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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 https://www.uspto.gov/

 

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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.

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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
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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.

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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.

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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.
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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) – 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, 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.  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).

 

Nominus.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.

 

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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

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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 https://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.

 

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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-useblobid0.png

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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.

 

 

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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

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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 https://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.

 

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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.

 

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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-registrationblobid0.png

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 https://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.

 

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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 a 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 applications 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 Nominus.com services:

Nominus.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.

 

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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.  

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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.

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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.

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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.
 
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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.

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

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

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When should I renew my trademark?

Renew it every 10 years.

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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 and a declaration of use.

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Trademark Renewal in United States

Trademark registrations in the United States are valid for 10 years.  If you wish to keep the 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 the 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 canceled and cannot be revived or reinstated.

 

Advantages of using Nominus.com services include:

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

 

Basic Questions
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What is a trademark?

A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.

With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.

 Some symbols to consider:

® Means the trademark is registered.

TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.

SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.

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What is the difference between a trademark, patent and copyright ?

You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.

patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.

You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.

Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:

  1. a) artwork (2 or 3 dimensional),
  2. b) photographs, graphic drawings, and designs as well as other forms of creativity;
  3. c) songs, music, and sound recordings of all kinds;
  4. d) books, manuscripts, publications, and another written work; and
  5. e) plays, movies, shows, and other performance arts.

 

Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.

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What is the difference between TM, SM, ® and other symbols?

The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.

  • TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
  • SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
  • ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
  • ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
  • Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
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What are trademark classes?

Trademark Offices around the world use classes to divide commercial products and services into defined categories.  When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity. 

Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.

These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics. 

Trademark protection only extends to commercial use within your specified classes.  It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.

You can search for your trademark class with this Trademark Class Search tool.

Trademark Search
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Why do I need to perform a trademark search?

Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? 

Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.  

It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class.  The other company may object to you using the trademark and legally prohibit you from doing so.

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Do I need an Attorney to perform a Trademark Search?

No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.

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Where can I perform a trademark search?

If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.

Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.

A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.

Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A  Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.

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