Trademark Registration

Who may file a federal trademark application?

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.

The applicant of a federal trademark registration is not required to be a U.S. citizen. However, citizenship must be provided in the application. If an applicant has dual citizenship, then the applicant must indicate which citizenship will be printed on the certificate of registration.

How long will it take for my mark to register?

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

What is an “intent-to-use” federal trademark application?

A party with a bona fide intention to use a specific mark in commerce in relation to specific goods or services may now file an application. However, before the mark will be registered, the applicant must use the mark in commerce in connection with the specified goods or services and submit specimens evidencing use and a verified allegation concerning that use.  First, an intent-to-use application will be examined in relation to all substantive and procedural requirements, except use-related issues, and, if acceptable, published for opposition. If there is no opposition, or any opposition is resolved in the applicant’s favor, the applicant will receive a Notice of Allowance. The applicant must submit a Statement of Use within six months of that date, or request a six-month extension of time. The grant of such extensions is predicated, in part, upon the applicant’s showing of “good cause” as to why the mark has not yet been used.

How does an intent-to-use application differ from an application based upon use in commerce?

The primary difference between the two types of applications is the basis for filing. Because of that difference, the filing requirements and processing of the two types of applications differ. A party may not file an application based upon use of a mark in commerce until after that use has occured. Instead of asserting a bona fide intent to use the mark in commerce, the use-based application must include allegations concerning dates of use and specimens evidencing use as a filing requirement. The use-based application will be examined and, if acceptable, published for opposition. If the mark is not opposed, or any opposition is resolved in the applicant’s favor, the mark will register. This procedure differs from the application procedure for an intent-to-use application, as noted above.

However, in all other respects the legal reasons for refusing registration (such as descriptiveness, likelihood of confusion, etc.) and the procedural requirements (such as specificity of identifications of goods, signature by applicant, etc.) are exactly the same for the two types of applications. Additionally, upon registration, the filing date of any application on the Principal Register is a constructive date of first use of the mark.

If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?

An Allegation of Use must be filed either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted. The applicant has six months from the mailing date of the Notice of Allowance to file either a Statement of Use or an Extension Request.

If the applicant is using the mark in commerce on all of the goods/services listed in the Notice of Allowance, the applicant must submit a Statement of Use, specimen, and the required fee(s) within six months from the issue date for the Notice of Allowance to avoid abandonment.

If the applicant is not using the mark in commerce on all of the goods/services listed in the Notice of Allowance, the applicant must file an Extension Request and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every six months calculated from the issue date for the Notice of Allowance until a Statement of Use is filed. Only a limited number of extension requests may be filed before an applicant is required to file a Statement of Use to avoid abandonment.

Is federal registration of a trademark guaranteed?

No. An examining attorney at the U.S. Patent and Trademark Office will review the federal trademark application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. Common reasons for refusing registration are because the mark include likelihood of confusion with a mark in a registration or prior application, mere descriptiveness for the goods/services, a geographic term, surname, or a mark being ornamental as applied to the goods. The USPTO examining attorney may also issue requirements concerning, for example, goods and services listed in the application, description of the mark, quality of the drawing, and specimens provided.

How long does my federal registration last?

Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents or copyrights, can be renewed forever as long as they are being used in commerce.

After a registration issues, to keep the registration “alive” or valid, the registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of the federal trademark registration.

Do I have to verify with the U.S. Patent and Trademark Office that I am still using my mark?

Yes. A trademark owner must submit a Declaration of Continued Use within the filing window to maintain registration of a mark, as mandated under the Trademark Act, 15 U.S.C. §1058. A Declaration of Continued Use is a sworn statement filed by the owner of a registration that the mark is in use in commerce.  In special cases, an owner may claim excusable nonuse of the mark by filing a Declaration of Excusable Nonuse. Untimely, incomplete, and noncompliant declarations will result in cancellation of a mark, removing the mark the register.

The owner of the registration must first file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date, as mandated by 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the initial ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court. Subsequent Declarations of Use (or Excusable Nonuse) and an appropriate application for renewal must be filed between each 9th and 10th year following the registration date, continuing so long as maintenance of the registration is desired. In many cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

Declarations of Use are reviewed by trademark specialists in the Post-Registration Division of the U.S. Patent and Trademark Office. If the declaration is accepted, the USPTO will send a Notice of Acceptance to the owner. If the declaration is refused, the Office will send an Office Action stating the reasons for refusal and remedies available if any.

Will my registration be cancelled if I do not file the appropriate Declaration of Continued Use?

Yes. The U.S. Patent and Trademark Office will cancel any registration on either the Principal Register or the Supplemental Register if a timely declaration is not filed by the current owner of the registration during the prescribed time periods. The USPTO has no authority to waive or extend the deadline for filing a proper declaration. Registrations cancelled due to the failure to file a Declaration of Continued Use cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

Do I have to renew my federal trademark Registration?

Yes.  Subject to the filing of required declarations and applications for renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.

To renew a federal trademark registration, you must file an Application for Renewal under the Trademark Act, 15 U.S.C. §1059 in conjunction with a Declaration of Continued Use (or Excusable Nonuse). The owner must file a declaration asserting use or excusable nonuse and an application for renewal between each 9th and 10th years succeeding the registration date. See 15 U.S.C. § 1059. In some cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

The USPTO has no authority to waive or extend the deadline for filing a proper renewal application. Registrations cancelled due to the failure to file a renewal application cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

Renewal applications are reviewed by trademark specialists in the Post-Registration Division. If the renewal application is accepted, the USPTO will issue a notice granting the renewal. If the renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and remedies available if any.

What makes a federal trademark registration incontestable?

An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). Incontestability is asserted in a sworn statement filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights.

Riling of a Declaration of Incontestability is optional. An owner may choose to claim the benefits of incontestability by filing an appropriate declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.

When can I claim that my mark is incontestable?

A declaration claiming incontestable status may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). Declarations asserting incontestability must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

The USPTO neither examines the merits of declarations claiming incontestability nor “accepts” such declarations. However, the USPTO will review a declaration claiming incontestable status to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those declarations that meet all statutory requirements. Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. 15 U.S.C. §1141m. Section 73 itself does not require a separate filing, but rather only establishes the time for filing.

What is a §71 Declaration of Continued Use?

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79′ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration. Registrations cancelled due to the failure to file a §71 Declaration cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

Must I file any other maintenance documents in addition to §71 Declarations?

Yes, the holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal the international registration with the International Bureau (IB). 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 – 31 of the Common Regulations under the Madrid Agreement and Protocol.

How do I renew my Registered Extension of Protection?

Requests for renewal of an international registration must be filed directly with the International Bureau (IB). 37 C.F.R. §7.41(a) A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website.

Should I hire an attorney?

Trademark registration and maintenance is complex. Although not required, most owners use private trademark attorneys for legal advice regarding use of their trademark, registration of a mark, and the unique issues for maintaining a federal registration, since not all registration remain valid perpetually. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.

For more information relating to representation for preparation, filing, examining, and maintaining your federal trademark registration, contact a trademark law firm such as Nyman IP at hello@nymanip.com or 312.487.2532.