Usually, the process takes 12 to 18 months. Registering your trademark is a complex procedure that involves your application moving through various stages. Learning about each stage in the process will help you understand why getting a trademark takes as long as it does.
within 30 daysYou may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette.
Prosecution of a U.S. trademark application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and costly endeavor than preparing and filing the application.
within six monthsGenerally, we must receive your response to an office action within six months from the date it issued for the response to be considered “timely.” Some types of office actions have a shorter deadline.
If the USPTO sends you an Office action, your trademark application won't move any further until you respond. You'll usually have six months to submit your response, but if you want your application to move quickly, you should respond as soon as you can. At the same time, don't be hasty.
Essentially, you cannot ask someone to stop using a trademark based on your federal rights while your application is pending, because you do not yet have the rights of a federal trademark registration. You may still have limited “common law” rights which can be enforced.
within 30 daysIf the mark has been published for proposed registration on the Principal Register, the party—usually the owner of a competing mark—can oppose the registration. The opposition must be in writing and be filed within 30 days of the proposed mark's publication in the Official Gazette.
If your trademark is infringed by a competitor, you might want to file a lawsuit seeking an injunction (a court order requiring that the competitor stop infringing) and/or money damages, and hire a lawyer to do so.
In determining the likelihood of confusion in trademark infringement actions the courts look to these eight factors: the similarity of the conflicting designations; the relatedness or proximity of the two companies' products or services; strength of the plaintiff's mark; marketing channels used; the degree of care ...
What must a plaintiff prove in a successful trademark infringement case? Defendant infringed plaintiff's mark. Defendant used the mark in an unauthorized manner. The use of the mark is likely to cause confusion or deception of the public as to the origin of the services or goods.
What does Infringement of Trademark mean? Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999. Simply put, when an unauthorized person uses a trademark that is 'identical' or 'deceptively similar' to a registered trademark, it is known as infringement.
The cost of responding to each office action can be $ 1,500 to $ 4,500. Once the patent is allowed, you have several weeks to pay the issue fee to the U.S. Patent and Trademark Office. That fee is $ 960 (or $ 480 for a small entity).
Application prosecution is the process of responding to objections and rejections by the trademark office. A non-final action means that there is something about the application that needs to be addressed by you or your lawyer.
As mentioned above, a response to a final Office Action should either (1) make the application allowable or (2) take another action that keeps the application pending.
How do I check the status of my application or registration? Use the Trademark Search and Document Retrieval (TSDR) system to retrieve status information and to review all documents currently in the record for pending applications and registered trademarks.
Once the mark is published in the Official Gazette, it normally takes between one and three months to get to the Registration Certificate. It takes this long because the USPTO is a large government entity. This is the final phase of the trademark process timeline.
Filing a trademark application is complex and time-consuming and requires a knowledgeable person to ensure the paperwork is completed properly. It is important to understand trademark law to avoid making common trademark mistakes during the trademark registration process.
A trademark pending status is an interim solution for protecting your intellectual property. You can use the trademark or service mark symbols with your design, but you need to make sure you file the trademark application as soon as possible.
How are trademarks enforced? Trademarks are enforced through cease and desist letters. Sending a cease and desist letter to the address of the infringer is usually the first course of action. In many cases, a cease and desist letter will be enough to persuade an infringer to leave your mark alone.
One way to protect your trademark is to monitor USPTO filings and oppose any applications to register trademarks that seem similar to yours. Another is to be assertive if you learn of another company that is using a name or logo that's similar to your registered trademark.
A petition for cancellation of a trademark registration may be filed at any time. However, a mark which has been registered for more than five years may only be cancelled on the grounds enumerated in Trademark Act § 14.
If the applicant fails to respond in a timely manner, the applicant will default and the case will be dismissed in favor of the Opposer. This will be the end of the applicant's trademark process and the application will become abandoned, so it's very important to respond to a Notice of Opposition as soon as possible.
A trademark can be revoked if it has become misleading to the public as a result of how it is used by the trademark owner or with the owner's consent. A trademark can become misleading, for instance, in terms of the geographic origin of the product or service.
Opposing a published trade mark. Opposition is the legal procedure that allows you to try to stop a published mark going on to become registered. You can oppose the entire application, or only some of the goods or services it covers.
Application Process. Trademark registration is a lengthy process due to the amount of review required. It can take as long as 12-18 months to register a trademark. And that's assuming there are no challenges to the application.
Trademark prosecution is the technical term used to describe the process of applying for a trademark (or service mark) with the United States Patent and Trademark Office (USPTO). A trademark is a symbolic representation of a company.
Submitting invalid evidence is another reason for the USPTO to reject your application. “Intent-to-use” means you are not yet using the trademark “in commerce,” but you are registering it in anticipation that you will use it when you launch your business.
When filing a trademark application, the first thing to consider is the type of trademark: use-based or intent-to-use. Simply filing the wrong type of application can trigger a rejection by the USPTO.
Your trademark registration is good for 10 years. If you need to renew it, you must do so shortly before that anniversary. Failure to renew will result in your registration's cancellation. If you need help with trademark prosecution, you can post your legal need on UpCounsel's marketplace.
If you file an "intent-to-use" application, your trademark will not be fully registered until you provide a Statement of Use to prove that you are actively using it.
Third parties may also oppose your trademark application if they believe it impacts them negatively. This might be because of a “Likelihood of Confusion” or because your trademark insults them in some way. Some companies have unregistered or state trademarks, which will not always turn up in USPTO trademark searches. There's a 30-day window for such challenges, beginning when your application appears in the Official Gazette.
A trademark lawyer costs around $1,000 to $2,000 for the general trademark process, but disputes could cost the client an additional $300 $400 an hour.
A trademark lawyer will conduct a comprehensive search to include federal, state, and common law trademarks, often using professional software.
A trademark lawyer already knows the entire process and what the Examining Attorney looks at for trademark approval.
Depending on what form you file, the USPTO will charge $225, $275, or $400. You can file through the Trademark Electronic Application System, or TEAS, as well as through the mail with a paper application. TEAS Plus is the cheapest option and requires you to file electronically. There are extra requirements for the requirement such as:
To qualify for a TEAS Plus trademark application, you need to meet certain filing conditions by including the following with the application:
You may not want to use a legal service online for several reasons. They might charge you to do a comprehensive search, but this indicates they won't do a thorough search in the first place. It can be more advantageous to use a lawyer in this case. You also can't get the same feedback and advice from an online legal service that you'd get from a lawyer. This is a big reason that trademark registrations get denied, as they're not distinctive enough.
This Statement of Use is filed at the end of the application process. You file the Statement of Use about seven to nine months after filing the first application. The USPTO will tell an applicant when the Statement of Use is due. There is a fee to file the Statement of Use. The fee is $100 for each class of goods in the original application.
Requirements to practice trademark law. Any individual who is an active member in good standing of the highest court of any U.S. state (including the District of Columbia, and any, commonwealth or territory of the U.S.) may represent others before the USPTO in trademark matters. Attorneys are not required to apply for registration ...
Subject to limited exceptions, individuals who are not active U.S.-licensed attorneys in good standing may not represent others before the USPTO in trademark matters .
An affected applicant is required to obtain U.S. counsel to prosecute the application. Therefore, when the USPTO receives a trademark application filed by a foreign domiciliary, with a filing basis under section 1 and/or section 44 of the Act, 15 U.S.C. 1051, 1126, that does not comply with the requirements of § 2.11 (a), the applicant will be informed in an Office action that appointment of a qualified U.S. attorney is required. The applicant will have the current usual period of six months to respond to an Office action including the requirement, and failure to comply Start Printed Page 31501 will result in abandonment of the application. See 37 CFR 2.63, 2.65 (a).
attorney is also necessary to enforce compliance by all foreign applicants, registrants, and parties with U.S. statutory and regulatory requirements in trademark matters. It will not only aid the USPTO in its efforts to improve and preserve the integrity of the U.S. trademark register, but will also ensure that foreign applicants, registrants, and parties are assisted only by authorized practitioners who are subject to the USPTO's disciplinary rules.
The United States Patent and Trademark Office (USPTO or Office) amends the Rules of Practice in Trademark Cases, the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S. (including the District of Columbia or any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. trademark registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
3 (b) (2) (A), the Commissioner for Trademarks (Commissioner) possesses the authority to manage and direct all aspects of the activities of the USPTO that affect the administration of trademark operations.
As discussed below, in the past few years, the USPTO has seen many instances of unauthorized practice of law (UPL) where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants before the USPTO. As a result, increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the standards for use of a mark in commerce, who can properly aver to matters and sign for the mark owner, or even who the true owner of a mark is under U.S. law. This practice raises legitimate concerns that affected applications and any resulting registrations are potentially invalid, and thus negatively impacts the integrity of the trademark register.
The trademark register must accurately reflect marks that are actually in use in commerce in the U.S. for the goods/services identified in the registrations. By registering trademarks, the USPTO has a significant role in protecting consumers, as well as providing important benefits to U.S. commerce by allowing businesses to strengthen and safeguard their brands and related investments.
The USPTO predicts that the number of foreign trademark filings will continue to rise based on a variety of economic factors , including the strength of the U.S. economy. This growth is coupled with a significant growth in the number of filings by foreign pro se applicants in FY15 through FY17, especially as compared with filings by U.S. pro se applicants. The information shown below reflects the representation status at the time the USPTO electronic record was searched to obtain the data. Representation status may change over the course of prosecution. However, system limitations only permit the USPTO to retrieve representation status at the time a search is done.