Markavo works with attorneys and law firms around the globe to assist them in securing their clients' trademarks in the U.S. Please reach out to us with any questions you may have.
What Types of Applications May Be Filed?
In the United States, trademark applications can be filed for:
Word Marks: Trademarks that consist solely of words, letters, or numbers, without any specific font, size, or color.
Design Marks: Trademarks that include stylized text, logos, or other graphical elements.
Combined Marks: Trademarks that incorporate both word and design elements.
Service Marks: Similar to trademarks but used to identify and distinguish services rather than goods.
Collective Marks: Used by members of a cooperative, association, or other collective group to identify themselves with a particular standard or organization.
Certification Marks: Indicate that goods or services meet certain standards set by the certifying organization.
What is the Basis for Filing a Trademark Application?
The United States Patent and Trademark Office (USPTO) recognizes several bases for filing a trademark application:
Use in Commerce (§1(a)): The mark is already being used in commerce in connection with the goods/services listed in the application.
Intent to Use (§1(b)): The applicant has a bona fide intention to use the mark in commerce but has not yet done so.
Foreign Application (§44(d)): The applicant has filed a foreign application for the same mark in their home country within six months prior to the U.S. filing.
Foreign Registration (§44(e)): The applicant owns a foreign registration for the same mark.
Extension of Protection under the Madrid Protocol (§66(a)): The applicant seeks an extension of an International Registration to the U.S.
What are the Requirements to Obtain a Filing Date?
To secure a filing date, a trademark application must include:
Applicant's Name and Address: Full legal name and address of the entity or individual applying.
Clear Drawing of the Mark: A depiction of the mark to be registered.
List of Goods/Services: A specific identification of the goods/services associated with the mark.
Basis for Filing: Specification of the filing basis, such as use in commerce or intent to use.
Application Fee: Payment of the appropriate filing fee for each class of goods/services.
What Additional Requirements Must All Applications Meet to Proceed to Registration?
Beyond the initial filing requirements, all trademark applications must meet the following:
Specimen of Use: For use-based applications, a specimen demonstrating actual use in commerce is required.
Declaration of Use/Intent: A verified statement attesting to the use or intent to use the mark in commerce.
Clear Description: A detailed description of the mark, especially for design marks.
Classification: Correct classification of goods/services according to the Nice Agreement.
Distinctiveness: The mark must be capable of distinguishing the applicant's goods/services from those of others.
What Additional Requirements Apply to Use-Based Applications?
For applications based on use in commerce (§1(a)), additional requirements include:
Actual Use in Commerce: The mark must be in actual use in commerce at the time of filing.
Specimen of Use: Submission of one specimen per class showing the mark as used in commerce.
Dates of First Use: Providing the dates of first use of the mark anywhere and in commerce.
What Additional Requirements Apply to Intent-to-Use Applications?
For intent-to-use applications (§1(b)), additional requirements include:
Statement of Intent: A bona fide intention to use the mark in commerce.
Amendment to Allege Use/Statement of Use: Filing an Amendment to Allege Use or a Statement of Use along with specimens of use after the mark has been used in commerce but before registration.
Extension Requests: Up to five six-month extensions to file the Statement of Use if the mark has not yet been used in commerce.
What Happens After the Application is Filed?
Once a trademark application is filed:
Examination: The USPTO examines the application for compliance with filing requirements and potential conflicts with existing marks.
Office Actions: The examining attorney may issue Office Actions requiring clarification or refusal based on various grounds.
Publication for Opposition: If the application is approved, the mark is published in the Official Gazette, allowing third parties to oppose the registration within 30 days.
Notice of Allowance: For intent-to-use applications, a Notice of Allowance is issued after successful opposition proceedings or if no opposition is filed.
Registration Certificate: If all requirements are met and no opposition is successful, the mark proceeds to registration, and a Registration Certificate is issued.
How Long Does It Usually Take for an Application to Mature to Registration?
The timeline for a trademark application to mature to registration varies, but typically:
Initial Examination: 3 to 4 months after filing.
Response to Office Actions: 6 months to respond to each Office Action.
Publication: Approximately 1 month after approval.
Opposition Period: 30 days, extendable up to 90 days.
Notice of Allowance: For intent-to-use applications, issued after opposition period.
Statement of Use: Must be filed within 6 months of Notice of Allowance, extendable up to 36 months.
Registration Issuance: Generally, within 9 to 12 months for use-based applications; longer for intent-to-use applications depending on use evidence submission.
On average, the process can take between 12 to 18 months, with intent-to-use applications potentially taking longer based on the use-in-commerce requirements and any extensions requested.
Understanding these requirements and timelines is crucial for efficiently navigating the trademark application process and securing protection for your clients' brands in the United States.