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IP Updates

About United States Trademark Registration

June 17, 2010

IP Updates

About United States Trademark Registration

June 17, 2010

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About United States Trademark Registration | For a PDF of this article, click here.

Unlike in most countries, agents and attorneys cannot file trademark applications in the United States based on a simple letter of instruction. The applications are comparatively detailed and must be signed by the applicant.

 

We normally recommend some level of searching (see “About Trademark Clearance Reports” on this website) before preparing trademark applications and advise if we see any potential problem that might make a mark unregistrable.

 

In order to prepare a United States trademark application, we need to know the following:  

 

1. Registrability of Mark

 

 Before filing a trademark application, we normally recommend that some level of searching be conducted to determine if there are any potential problems that might make a mark unregistrable (see “About Trademark Clearance Reports” on this website).

 

 The following marks are considered unregistrable:

 

a mark confusingly similar to one already registered or used in the United States;

 

utilitarian configurations or features;

 

generic names;

 

immoral, deceptive or scandalous matter;

 

matter which disparages or falsely suggests a connection with a person, institution, belief or national symbol;

 

flags, coats of arms or insignias of the United States or any other nation or state; and

 

the name, portrait or signature of a living individual without that person’s written consent (or President within the lifetime of his widow without consent).

 

Marks which are merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily surnames may only be registered if they have become distinctive of the products or services for which they have been used.

 

 

 

2. Kind of Mark

 

 United States trademark law recognizes four types of marks: 

 

(a) Trademarks distinguish the products of one merchant or manufacturer from those of another. “Products” means tangible articles or goods that are sold, ranging from vegetables to automobiles to dolls to video games. Trademarks may include brand names, logos, the shape and/or appearance of packages or the products themselves, sounds, odors and colors that distinguish the product of one merchant or manufacturer from those of another.

 

(b) Service Marks distinguish the services of one provider from those of another. “Services” means commercial activity performed to the order of, or for the benefit of, someone who is not the mark owner, and must not be incidental to some other activity. Service marks identify such services as restaurants, insurance, entertainment , education, repair work, cleaning, transportation and retail store selling.

 

Example: A shoe is a product. Selling or repairing the shoe is a service. Guaranteeing the shoe or its repair is incidental to selling the shoe or its repair, and thus is not a service unless the guarantee is purchased independently from someone other than the shoe seller or repairer.

 

(c) Certification Marks certify that another person’s goods or services are in compliance with established standards relating to geographic origin, material, method of manufacture, quality, accuracy, or other characteristics; they also can be marks certifying that a product was made or service rendered by members of a specific trade union or organization. The right to use a certification mark must be granted to all who meet the necessary standards. Certification Marks may not also be used as trademarks or service marks — they may only be used as certification marks.

 

(d) Collective Marks show the user’s membership in a group or association. They often function as trade or service marks for the products or services of the group members (for example, a dairy cooperative), but also may function simply to identify the wearer as a group member (for example, “Girl Scouts of America”). Collective Marks may also be trademarks or service marks.

 

 

 

3. Type of Application

 

The United States permits four different types of trademark applications, which generally may be combined in the same application (though one application may not claim both actual use and an intent to use a mark with respect to the same goods and services).  

 

(a) Use-based Trademark Applications are founded upon prior, continuing use in United States commerce.

 

U.S. Commerce includes commerce across state (or U.S. territorial) lines (which normally occurs when the goods are sold or services are rendered in more than one state/territory), commerce between the United States and one or more foreign nations, commerce with a Native American Indian tribe or commerce otherwise regulated by the U.S. Congress (which is most commerce). Equally important, the use must be ordinary commercial use for the type of goods in question; small scale transactions made for the purpose of establishing or maintaining trademark rights are not “use,” even if they are “in United States commerce.”

 

(b) Intent-to-use (“ITU”) Applications must be based upon a bona fide intention to use the mark in U.S. commerce. Registrations based on ITU applications will not be granted until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce. Again, the use must be ordinary commercial use for the type of goods or services in question. Once the registration issues, its priority date is the date on which the application was filed.

 

(c) If the same mark previously registered in its country of origin if that country is a Paris Convention member) and is otherwise eligible for registration in the U.S., registration will be permitted upon the filing of a certified copy of the home registration, an English language translation thereof by one who swears that he or she is familiar with the original language and with English, and the applicant’s allegation of a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). Not all goods or services for which the mark is registered abroad need be covered by the U.S. application, but no goods or services may be added. U.S. standards for identification of goods or services often require substantial changes in the translated description of the goods or services for which the mark is registered abroad.

 

The U.S. application may, but need not, be combined with either a Use-based or an Intent-to-use application (in the latter case, registration on the Intent-to-use basis may not issue until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce).

 

(d) Registration of a mark by the owner of a pending home country application also is allowed, provided the applicant is willing to allege a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). U.S. registration, however, may not be obtained until the home country registration has been issued. The same rules outlined in subsection (c) above apply to the identification of goods and services.

 

Paris Convention priority is available if the application is filed within six months of its filing in its home country. The U.S. application may, but need not, be combined with either a Use-based or an Intent-to-use application (in the latter case, registration on the Intent-to-use basis may not issue until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce).

 

 

 

4. Specific Information Required for Prosecuting Applications  

 

(a) Requirements to receive a filing date for all applications  

 

Pursuant to rule changes effective October 30, 1999 implementing the Trademark Law Treaty, only the following elements are required to receive a filing date: 

 

(1) The name of the applicant.

 

(2)The name and address for correspondence with the Patent and Trademark Office.

 

(3) A clear drawing of the mark. Word marks may be typed. If the mark is not a word mark or consists of a stylized form of a word mark, a black & white printer’s proof or other clear black & white rendition of the mark must be submitted.

 

(4) A list of the goods, services, subject of certification, or goods or services of the collective on or for which the mark is or will be used (or for which it is already registered or applied for in the case of foreign registered or applied-for marks). The goods or services must be identified by their ordinary name (such as “jackets, slacks and shirts”); class headings and broad categories (such as “clothing” or “garments”) are not acceptable.

 

(5) The filing fee for at least one class of goods or services. 

 

If the applicant’s basis of filing is not stated in the original application, it will be requested in the first office action.

 

The applicant’s ownership of any prior U.S. registrations or applications for the same or similar marks should also be identified in the original application to avoid any unnecessary delays in the prosecution of the application. 

 

(b) Requirements to receive a registration

 

During the course of examination of the application, the following additional information must also be supplied, if it was not included with the original application:  

 

(1) For applications based on use of the mark in U.S. commerce:  

 

(A) the date of first use of the mark anywhere.

 

(B) the date of first use of the mark in U.S. commerce.

 

(C) whether such use was (and continues to be) under license or was made by a predecessor or affiliated company, and an explanation of the details.

 

(D) three or more specimens for each class of goods or services showing the mark as it is presently used in U.S. commerce (one of which must be filed and two of which are retained for our records). It is customary, but not required, for the specimens to be identical.  

 

Trademark specimens should be labels, hang tags, containers or photographs of the goods themselves bearing the trademark, catalog pages illustrating the goods in close proximity to the mark (provided the catalog includes information necessary to order the goods), or a manual for operating or instructions for assembling the goods. Some displays associated with the goods at the point of sale are acceptable.  

 

Service mark specimens may include advertisements, certain promotional materials, invoices that refer to the relevant services, letterheads or business cards that refer to the relevant services, and a variety of other materials showing the mark in connection with the services.  

 

Certification mark specimens may be tags or labels applied by those whose products are certified, not the party seeking to register, or may be of the same nature as trademark specimens if the mark certifies goods and of the same nature as service mark specimens if the mark certifies services.  

 

Collective mark specimens should evidence use by the members of the collective, not the party seeking to register, and can include badges, ID cards, photographs of uniforms, letterheads and, presumably, advertising using the mark to show membership in the collective. In the case of a collective trademark (for example, a dairy cooperative’s brand name for cheese) or service mark, the specimens would be the same as for any other trade- or service mark.  

 

If for reasons of size such specimens do not readily fit into a file, a photograph or photoprint of the product, package or display will be acceptable.  

 

(2) For applications based on an intent to use the mark in U.S. commerce:  

 

(A) The applicant must declare, under penalty of perjury resulting in possible fine or imprisonment, that it has a bona fide intent to use the mark in U.S. commerce (i.e. it has good faith plans to sell goods or services under the mark in an ordinary commercial manner).  

 

In addition, before a registration will be issued to an ITU applicant use of the mark in U.S. commerce must be demonstrated by filing either an Amendment to Allege Use or a Statement of Use. These two documents are essentially the same and differ only in their timing.  

 

Amendment to Allege Use

 

If an intent to use applicant begins proper use of the mark in U.S. commerce (as defined in 3(a) above), it may file an Amendment to Allege Use if the application has not yet been approved for publication. After the application has been approved for publication, the applicant must wait and follow the Statement of Use procedure (see Section 7(b) below). An Amendment to Allege Use must include:  

 

(i) a statement that the mark is in use in U.S. commerce (as defined in 3(a) above) on or in connection with all of the goods and/or services recited in the application. If an Amendment to Allege Use recites use on fewer than all goods or services, which may be appropriate when plans to use the mark for certain goods or services have been dropped, the omitted goods or services will not be covered by the registration.

 

(ii) the information and material required by Section 4(b)(1) above.

 

(iii) the signature of a person authorized to sign as explained in Section 5 below. 

 

Statement of Use

 

 If no Amendment to Allege Use is filed, once an intent to use application has been published and either not opposed or opposed unsuccessfully, a Notice of Allowance is mailed. To obtain registration of the mark, the applicant must file a Statement of Use within six months (subject to extensions — see below). A Statement of Use must include:  

 

(i) a statement that the mark is in use in U.S. commerce (as defined in 3(a) above) on or in connection with all of the goods and/or services recited in the application. If a Statement of Use recites use on fewer than all goods or services, which may be appropriate when plans to use the mark for certain goods or services have been dropped, the omitted goods or services will not be covered by the registration.

 

(ii) the information and material required by Section 4(b)(1) above.

 

(iii) the signature of a person authorized to sign as explained in Section 5 below.  

 

Extensions of Time to File Statement of Use

 

If the required Statement of Use in commerce cannot be filed within six months after the mailing of the Notice of Allowance, a six-month extension of this deadline may be obtained upon request and payment of a fee. Four further six-month extensions are available if filed within the prior six-month period with a fee. These further extension requests must include a showing of good cause and continuing intent to use. There is a limit to the number of extensions of time that can be filed, the effect of which is that an acceptable Statement of Use must be filed within three years from the date of the Notice of Allowance or the application becomes abandoned.  

 

Requirements for First Extension Request:  

 

(i) a statement of the applicant’s continuing bona fide intent to use the mark in U.S. commerce.

 

(ii) the signature of a person authorized to sign as explained in Section 5 below.  

 

Requirements for Second through Fifth Extension Requests:  

 

(i) a statement of the applicant’s continuing bona fide intent to use the mark in U.S. commerce.

 

(ii) a description of the ongoing efforts to use the mark in commerce. These efforts may include, without limitation, product research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval or other similar activities. Each successive request should reflect some progress.

 

(iii) the signature of a person authorized to sign as explained in Section 5 below.  

 

(3) For applications based on a foreign registration:

 

 A certified copy of the registration in the country of origin and a sworn translation into English must be filed in order to obtain a U.S. registration. The applicant will also be required to declare, under penalty of perjury resulting in possible fine or imprisonment, that it has a bona fide intent to use the mark in U.S. commerce (i.e. it has good faith plans to sell goods or services under the mark in an ordinary commercial manner).

 

(4) For applications based on a foreign application:

 

The foreign application filing number, filing date, and country where filed must be submitted. A certified copy of the registration in the country of origin and a sworn translation into English must ultimately be filed in order to obtain a U.S. registration. The applicant will also be required to declare, under penalty of perjury resulting in possible fine or imprisonment, that it has a bona fide intent to use the mark in U.S. commerce (i.e. it has good faith plans to sell goods or services under the mark in an ordinary commercial manner).

 

 

 

5. Who May Sign The Application  

 

As of October 30, 1999, attorneys may file trademark applications in the United States based on a simple letter of instruction. A signature is not required in the initial application, but must be supplied before a registration will be issued.

 

 The following persons are authorized to sign on behalf of an applicant:  

 

(a) a person with legal authority to bind the applicant;

 

(b) a person with firsthand knowledge of the facts asserted and actual or implied authority to act on behalf of the applicant; or

 

(c) an attorney who has actual or implied written or verbal power of attorney from the applicant.  

 

If the applicants are joint applicants, then each applicant must sign. If the applicant is a joint venture, then each party to the venture must sign.

 

 

 

6. Examination of the Application  

 

(a) Examination. After an application is filed, an examining attorney from the Patent and Trademark Office reviews the application to see if the application is unregistrable for any reason (noncompliance with application formalities, conflicting marks, or for any of the reasons stated in Section 1 above). If the application is not entitled to registration, the examining attorney must advise the applicant of the reasons.

 

(b) Response. The applicant will then have an opportunity to supply the examining attorney with additional information, amend its application, or try to convince the examining attorney to change his or her position.

 

(c) Further examination. If the applicant responds to the Office action, the examining attorney will then reexamine the application and either forward the application for publication, reply to the applicant’s remarks or declare his or her decision to be final.

 

(d) Final action. If a final action refusing registration is issued, the applicant can request that the examining attorney reconsider the final action, file an appeal, comply with the examining attorney’s requirements, or under certain circumstances petition the Commissioner.

 

 

 

7. Post Registration Filings  

 

(a) Section 8 Declarations of Continued Use

 

Between the fifth and sixth year following registration, and in the year preceding the tenth anniversary of the registration and every ten years thereafter, a declaration must be filed showing that the mark is still in use in U.S. commerce (as defined in Section 3(a) above). Upon payment of an additional fee, a declaration may be filed within a six-month “grace period” after the initial deadline.

 

If the mark is not in use, but the failure to use is believed to be excusable, the registrant should so advise U.S. counsel as soon as possible. If there is a good reason the mark is not in use, the registrant may file a declaration stating the facts excusing such nonuse and demonstrating that the nonuse is not due to any intention to abandon the mark.

 

If the mark is no longer used in the form shown in the registration, U.S. counsel should be informed well before the renewal deadline, so appropriate amendment to the registration may be made or other action may be taken.

 

If a timely Section 8 declaration (or explanation for nonuse) is not filed, the Patent and Trademark Office will cancel the registration. Scrupulous accuracy as to the facts is essential to avoid jeopardizing the validity of the registration.  

 

Requirements for Section 8 Declarations:  

 

(1) a statement of the goods or services listed in the registration for which the mark is in use in commerce, specifying the goods and services, if any, with which the mark is no longer in use and that are to be deleted from the registration.

 

(2) a statement of the goods or services listed in the registration for which excusable nonuse is claimed, if any, including the date when use of the mark stopped, the approximate date when use will resume, and the facts showing that the nonuse is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark.

 

(3) a specimen showing current use of the mark for each class of goods or services for which the registration is to be maintained (see Section 4(b)(1)(D)), unless excusable nonuse is claimed.

 

(4) if the registrant is not domiciled in the U.S., the name and address of a U.S. resident upon whom notices or process in proceedings affecting the mark may be served.

 

(5) the signature of a person authorized to sign as explained in Section 5 above.  

 

(b) Section 15 Declarations of Incontestability

 

Anytime after the fifth year of registration of a mark on the Principal Register, Section 15 of the Trademark Act permits a registrant to file a declaration whereby the right to use the registered mark in U.S. commerce for the goods and/or services set forth in the declaration becomes “incontestable.” When a Section 15 declaration is filed, the registration becomes “conclusive” evidence (see below) of the validity of the mark and its registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce for the goods and services for which it is registered.  

 

Requirements for Section 15 declarations:  

 

(1) a listing of the goods or services recited in the U.S. registration for which the mark remains in use and has been used in U.S. commerce for five consecutive years after the date of registration.

 

(2) a statement that the mark has not been the subject of any final decision in the courts or the Patent and Trademark Office adverse to the registrant’s ownership of the mark or of its right to register the mark or maintain it on the register, and that there are no pending proceedings in which such matters are at issue.

 

(3) the signature of a person authorized to sign as explained in Section 5 above.  

 

An incontestable registration cannot be challenged on the grounds that the mark is not inherently distinctive and lacks secondary meaning or that the mark is inferior in priority to another’s previously used mark. However, the following eight exceptions are possible defenses to infringement of an incontestably registered mark (and several may be used to attack the validity of the registration):  

 

(1) fraud in obtaining the registration or the status of incontestability;

 

(2) abandonment of the mark;

 

(3) use of the mark to misrepresent source;

 

(4) good faith, nontrademark, descriptive or surnominal use of the mark;

 

(5) use of the mark by an innocent user prior to the registrant’s registration or priority date (limited to the geographic area of such prior, continuous use);

 

(6) prior registration of the mark by defendant;

 

(7) use of the mark to violate federal antitrust law; and

 

(8) equitable defenses such as laches, estoppel and acquiescence.  

 

(c) Combined Section 8 & 15 Declarations

 

Section 8 and 15 declarations may be combined into one document, and usually are. All of the requirements listed above for each apply. It should be noted, however, that it may be necessary to file a Section 15 declaration after a Section 8 declaration, for example if the mark is the subject of litigation when the Section 8 declaration is filed. Failure to file a Section 15 declaration does not result in cancellation of the registration.  

 

(d) Section 9 Renewal Applications

 

Renewal applications must be filed prior to the end of the term of any registration. Renewal applications also may be filed to reinstate an expired registration within six months following the expiration date upon payment of extra fees.

 

Renewal is possible only if the mark is still in use in U.S. commerce (as defined in Section 3(a) above) or if a showing is made that nonuse is due to special circumstances which excuse the nonuse and is not due to any intention to abandon the mark. (See Section 7(a) above).

 

If the mark is no longer used in the form shown in the registration, U.S. counsel should be informed well before the renewal deadline so that appropriate amendment may be made to the registration or other action taken.  

 

Requirements for Renewal Applications:  

 

(1) a request for renewal of the registration of the mark for those goods or services listed in the registration, or, if the renewal does not apply to all goods or services listed in the registration, a listing of those goods and services for which renewal is sought.

 

(2) if the registrant is not domiciled in the U.S., the name and address of a U.S. resident upon whom notices or process in proceedings affecting the mark may be served.

 

(3) the signature of a person authorized to sign as explained in Section 5 above.  

 

(e) Combined Section 8 & 9 Declarations

 

Section 8 and 9 declarations may be combined into one document. All of the requirements listed above for each apply.

 

 

 

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