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.

Should I conduct a search for similar trademarks before filing an application?

It is advisable to conduct a search before filing your application. Registration of a mark by the U.S. Patent and Trademark Office is not guaranteed. A comprehensive trademark search allows a potential applicant to assess the trademark landscape for their proposed mark, providing insight to possible challenges with federal registration. Commissioning a comprehensive trademark search and option additionally allows a business or individual to identify and evaluate potential opposition or infringement issues, facilitating an informed decision as to whether to continue a branding strategy for a proposed mark. Nyman IP provides a comprehensive trademark search, analysis, and opinion package for clients desiring detailed knowledge of a proposed mark before embarking on extensive branding or marketing campaigns.

Can I apply for federal trademark registration if my mark is not presently being used in commerce?

In short, yes. A trademark application can be filed if a mark is being used, or intended to be used, in commerce to identify and distinguish the goods or services associated with the mark. The basic difference between “use” and “intent to use” is whether the mark is currently being used on all the goods/services for which registration is sought. If a mark is already used in commerce, a federal trademark application can be filed alleging “use in commerce.” If the mark is not yet used in commerce, but intend to be used in the future, a federal trademark application can be filed alleging “intent to use.” An “intent to use” basis will require additional forms and fees beyond that which is required for federal trademark applications alleging “use in commerce.”

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 occurred. 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 before 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.

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.


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