A trademark is a word, a symbol or design, or a combination thereof, which serve to distinguish the goods or services of a person or company from other products or services available on the market. Trademarks represent not only actual wares and services, but also the goodwill of the producer. In this sense, they are considered valuable intellectual property. In order to facilitate the registration of a trademark, certain rules apply: • descriptive and generic terms should never be used, and • terms of particular use in an industry should be avoided.
When the trademark is a "design", the applicant may registration the words and logo separately. The applicant may register the words and logo separately giving it maximum protection and more flexibility in the use of such trademark.
The registration process, thanks to extensive searching to detect conflicting trademarks, allows the applicant to claim a unique brand and avoid violating the rights of others. Registration is irrefutable evidence (prima facie) of exclusive ownership in the US which allows the owner of the trademark to more easily protect their rights in case of dispute. Although registration provides the best legal protection against unlawful use of a trademark by a third party, it is important to understand that it is not and can never be a guarantee against any eventuality. For example, certain circumstances permit the cancellation of a trademark. In addition, the registration of a trademark with the Office of the United States Patent and Trademark Office (USPTO) protects the rights of the owner in the United States alone. If the same mark is used in other countries, it would be appropriate to consider registration in each of these countries.
The process of application for registration of a trademark in the United States may take 12 to 18 months from the initial filing to approval of registration. However, this period may be extended depending on the particularity of the application, the flexibility with which the applicant is involved in the process and whether or not the opposition proceedings are commenced in the process. Here is an overview of the general procedure for filing an application for registration of trademark with the USPTO.
1. Filing of the application: The application for registration of trademark is filed with the USPTO, where it is currently assigned a serial number.
2. The USPTO examines the application: If the minimum requirements for the filing of an application are met, the application is forwarded to a lawyer who will review it to determine if the Federal Law on Trademarks allows the registration of the mark.
3. The USPTO publishes the mark: If the application is not subject to any additional requirements or refusal, the examining attorney authorizes the publication in the Official Gazette (OG), the official periodical of the USPTO. About one month following approval, the mark will be published in the OG for an opposition period of 30 days. If refusals or additional requirements arise during this period, the examining attorney assigned to the application issues a document (Office action, an act of the Board) on the nature of the refusal and / or these requirements. Within a period of six months following the issuance of the Office action, the applicant must submit a response addressing each of the grounds for refusal and each requirement.
4. The USPTO publishes the mark: If the applicant's response overcomes refusal and / or satisfies any additional requirements, the examining attorney allows the mark to be published in the Official Gazette (OG).
5. The mark is registered: Within about three months after publication of the mark in the Official Gazette, and in the absence of any appeal in opposition, the USPTO issues a registration. If an appeal in opposition is launched unsuccessfully, registration is issued after this appeal is rejected by the Trademark Trial and Appeal Board, the Litigation Division of the USPTO. Following the issuance of registration, the applicant must therefore file specific documents in order to keep the registration active.
6. Issuance of a Notice of Allowance: A NOA is issued to the applicant within three months following the publication of the mark in the Official Gazette. The NOA is not a registration but is a notice enabling registration of the mark followed by the filing of a Statement of Use (SOU). The schedule for the filing of a SOU or a request for extension of the filing period (extension request) is calculated from the date of issuance of the NOA. If the applicant does not file a SOU or a request for extension of the period for filing within six months from the date of issuance of the NOA, the application will fail.
7. The applicant shall submit a Statement of Use: Where the applicant intends to use the mark in commerce on all goods and services, it must submit a SOU and all fees payable within six months from the date of issuance of the NOA otherwise the application will fail. The applicant may not withdraw the application to file a SOU, but it may apply only once, for the extension of the filing period in order to correct an inadequate SOU. No other request for extension of time will be considered.
8. The USPTO examines the SOU: If the minimum requirements for the filing of a SOU are met, it is forwarded to the lawyer who will seek to review whether federal law allows registration. The applicant may not withdraw the application for SOU and filing fees cannot be refunded, even if for legal reasons a request does not result in the issuance of a registration.
9. SOU is approved and the mark is registered: In the absence of any refusal or any additional requirements, the examining attorney approves the SOU. Within approximately two months following approval of the SOU, the USPTO issues a registration. The applicant must then file specific documents in order to keep the registration active.
10. The owner of the registration files a statement: Within six years after the date of issuance of the registration, or within the grace period of six months following the end of the sixth year, the owner of the registration must file a Declaration of use, otherwise the registration will be canceled.
11. The owner of the registration files a statement or a renewal application: In the year before the end of each period of 10 years from the date of registration, the owner of the registration must file a Combined Declaration of Use or Excusable Non-Use / Application for Renewal (a declaration of use or non- use justified / renewal Application) otherwise the registration will be canceled or deemed expired.
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