United States Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service.
Joint applicants are permitted in this jurisdiction.
Either actual use or intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
state or country of incorporation;
description of trademark;
specimen of trademark (an actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration);
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of use;
proof of use;
dates of first use;
statement of intention to use;
official filing fee.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
state or country of incorporation;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of intention to use;
official filing fee.
The list of goods and services in this jurisdiction may specify:
a list of the common commercial names for the specific goods or services of interest.
The following number of copies of the trademark must be submitted: One copy of the tradmark must be submitted. It appears on the trademark application drawing page.
In this jurisdiction, the following type of registration is available:
local (e.g., state);
national;
international.
This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)
Applications are officially searched as to prior trademarks.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
An International registration can be based on a national application or registration in this jurisdiction.
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.
For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes: one.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction;
a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction.
IV. APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available:
through publication and online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
state or country of incorporation of applicant;
citizenship of applicant;
application number;
application date;
goods/services;
priority claim information;
dates of first use;
representation of trademark;
specimen(s) of use.
B. Examination
Applications are examined in respect of:
formalities, i.e., for compliance with the filing requirements;
classification, i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity, i.e., that descriptions are clear, and are understandable;
descriptiveness, i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness, i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness, i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
conflict with prior an earlier registration, prior filed application or earlier unregistered rights resulting from an official search.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.
This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may be requested. One must file a "Petition to Make Special." A petition to make special is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out of its regular order (See Trademark Manual of Examining Procedure §§1710 et seq. regarding the petition requirements and filing procedure.). The examining attorney should promptly examine any application that has been made special.
Invoking supervisory authority under 37 C.F.R. §2.146 to make an application special is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make special is denied when the circumstances would apply equally to a large number of other applicants. The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants. The most common reasons for granting petitions to make special are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.
A reason for acceleration is required. The following are considered acceptable reasons: A new application for registration of a mark that was the subject of a previous registration that was inadvertently canceled or expired under 15 U.S.C. §1058, 1059 or 1141k will be made special upon the request of the applicant if the applicant is the prior registrant or the assignee of the prior registrant. The mark in the new application must be identical to the mark in the canceled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the canceled or expired registration.
A fee for acceleration is not required. However, a petition to make special must be accompanied by: (1) the usual filing fees required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the filing date of the application establishes a constructive date of first use for an intent to use application;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
proprietary rights, such as an earlier conflicting registration;
the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;
the mark is not distinctive;
the mark is misleading, deceptive or disparaging;
rights in a company name.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: at publication.
The opposition period ends on the following date: 30 days after publication. Extensions are available.
The following parties may oppose an application:
any interested party (including a person or entity who believes he will be damaged by registration of the opposed mark);
the owner of an earlier right;
a licensee.
Oppositions can be filed online.
E. Proof of Use
Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance, for applications based solely on a non-U.S. registration (Lanham Act §44(e)), or requesting an extension of protection of an international registration to the U.S. (Lanham Act §66(a)). Otherwise, proof of use in U.S. commerce is required for registration to issue. For §44(e) or §66(a) registrations, proof of use (or of excusable non-use) will be required to maintain a registration.
V. ASSIGNMENT AND LICENSING OF AN APPLICATION
A. Assignment
An application can be assigned.
An assignment of an application must be for the entire territory covered by the application.
An assignment of an application can be for some of the goods or services listed in the application. An assignment may be made for a portion of the goods or services or a portion of the business associated with them; it may not be used to impose geographical restrictions.
Goodwill must be included in an assignment of an application.
A written assignment for an application requires:
name of the assignor;
address of the assignor;
name of the assignee;
address of the assignee;
details of the trademark being assigned;
the territory being assigned;
the effective date of the assignment;
signature by the assignor;
consideration (either actual or nominal);
special language regarding assignment of an intent to use application, if applicable. If an amendment to allege use or a statement of use has not yet been filed to support an intent-to-use application, the intent-to-use application may only be assigned in connection with the transfer of the business to which the application pertains, provided that the business is ongoing and existing.
Legal verification of a written assignment document is not required.
An assignment of an application need not be recorded but, if it is not recorded, the assignment may not be effective against a subsequently dated but recorded assignment. An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within three months after the date of the assignment or prior to the subsequent purchase (15 U.S.C. §1060(a)).
B. Licensing
An application cannot be licensed. However, the right to use a mark may be licensed.
VI. REGISTRATION
A. Requirements
A fee is not required for issuance of the registration.
The following documentation is required for issuance of the registration:
statement of use;
specimens.
B. Rights
The following rights are established by registration:
the exclusive right to use the registered trademark;
the right to sue for infringement against confusingly similar third party trademark use;
the right to apply for seizure by customs authorities for importation of counterfeit goods.
A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
never. Once a registration on the Principal Register has passed its fifth anniversary, it can be canceled in a challenge brought by another party only on the grounds set forth in Section 14(3) of the Trademark Act, 15 U.S.C. §1064(3), which include that the registered mark has become generic for the goods or services (or a portion of them) for which it is registered; that the mark is functional; that the mark has been abandoned; that the mark has been used to misrepresent the source of the goods and services associated with it, i.e., affirmative “passing off”; and that the registration was obtained fraudulently. Provided that the registered mark has been used continuously for five years and that there have been no final decisions adverse to the registrant’s ownership of the mark, the registrant has the option at any point after five years of registration to file a declaration of incontestability under Section 15 of the Trademark Act, 15 U.S.C. §1065. Upon the filing of such a declaration, and subject to the exceptions listed in Section 33(b) of the Trademark Act, 15 U.S.C. §1115(b), the registration serves as “conclusive evidence of the validity of the registered mark and of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce” in litigation to protect the mark.
The territorial limit of registration is: the geographical scope of the United States, its territories and possessions, including American Samoa, Guam, the Northern Mariana Islands, Puerto Rico, and the U.S. Virgin Islands.
C. Term
The initial term of a registration is:
ten years.
The beginning of the term of a registration is calculated from:
the registration date.
D. Marking Requirements
Marking is not compulsory for registered trademarks, but is advisable because: failure to use such notice precludes recovery of damages, except on proof that the defendant was duly notified of infringement, and continued after notice.
Any marking should be in the form(s) mentioned below. Please consult with your local attorney in case of doubt.
TM (if an unregistered trademark);
SM (if an unregistered service mark);
® (if a regsitered trademark or service mark).
The use of ® is legally recognized.
