MEMO ON TRADEMARK REGISTRATION IN USA
I. REQUIREMENT DOCUMENTS
a. Name, address and nationality of applicant;
b. The applicant’s type of legal entity and citizenship (if any);
c. The country and filing date of the priority application and priority documents if the right of priority is claimed.
d. Original Power of Attorney;
e. The trademark details and clear copy of the mark, logo;
f. The designated class/goods thereof;
g. The dates of first use of the mark and a specimen of use of the mark (if any);
h. A verified statement or declaration.
II. GENERAL TIME FRAME OF TRADEMARK REGISTRATION IN A SMOOTH CASE
The approximate time from application to registration (for a regular prosecution, without opposition) is about 12 months, assuming that no Office Action is needed.
III. VALIDITY TERM
The duration of the protection of a trademark right is 10 years from the date of registration of the trademark, which may be renewed every 10 years.
Every sixth and tenth year, you should file a Declaration of Continued Use, along with a current “specimen” of use, or a Declaration of Excusable Nonuse.
IV. PROCEDURE
1. The bases for filing
Trademark application must be based on either:
i. Use in commerce; or
ii. Intent to use in the future.
2. USPTO reviews application
After the USPTO determines that application have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees.
If the examining attorney determines that a mark should not be registered, the examining attorney will issue a letter (office action) to you explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application.
3. USPTO publishes mark
If the examining attorney raises no objections to registration, or if you overcome all objections, the examining attorney will approve the mark for publication in the “Official Gazette,” a weekly publication of the USPTO.
4. Registration certificate issues for applications based on use
If the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration, and no party files an opposition or request to extend the time to oppose, the USPTO will register the mark and send the owner a certificate of registration. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.
5. Notice of allowance issues for applications based on an intent to use the mark
If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight weeks after the date the mark was published. The applicant then has six months from the date of the notice of allowance to either:
- Use the mark in commerce and submit a statement of use (SOU); or
- Request a-six-month extension of time to file a statement of use (extension request).
6. Applicant files timely statement of use or extension request
The applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use (SOU) or file an extension request. More than one extension request may be filed, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within. Please review the additional information for the SOU use and extension request processes.
If the applicant does not file a statement of use or extension request within six 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 two months of the abandonment date.
7. USPTO reviews statement of use
If the Statement of Use (SOU) does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration. Submission of an SOU does not guarantee registration. If no refusals or additional requirements are identified, the examining attorney approves the SOU.
If refusals or requirements must still be satisfied, the examining attorney issues you 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. If all issues are not resolved, the application will abandon.
If your response does not overcome all objections, the examining attorney will issue a final refusal office action.
8. Registration certificate issues
Within approximately two months after the SOU is approved, the USPTO issues a registration. To keep the registration “live,” the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration.
If your registration is cancelled or expired, your only option is to file a brand new application and begin the entire process again from the very beginning.
In case you require more information or require advice on trademark in USA, China, ASEAN, CPTPP, EVFTA... as well as other IP matters, please do not hesitate to contact us via:
Email: info@lawfirmelite.com
Tel: (+84-24) 3 7373051
Fax: (+84-24) 3 7373056
