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Filing USA Trademark Application

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Filing USA Trademark Application

Postby Pinskylaw.ca » 09 Aug 2013, 10:01

1. Who May Apply

Any legal person may apply for registration of a trademark based on any of the following grounds provided for by the Lanham Act: (1) use of a trademark in commerce; (2) intent to use a trademark; (3) pending foreign application in a Paris Convention country; (4) registration in a Paris Convention country; (5) request for extension of protection to the U.S. under the Madrid Protocol. Applicants may amend their basis for registration during the application process. However, while an application may be filed without use, registration requires actual use of the trademark in commerce, except for foreign applicants filing under Section 44 (foreign registration or pending foreign application in a Paris Convention country) and applicants seeking an extension of protection under the Madrid Protocol.

2. What Can Be Registered

Generally, any word, name, symbol, or device, or any combination thereof may be registered, if used by a person or for which a person has a bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those of others and to indicate the source of the goods, even if that source is unknown. Lanham Act provides for a Principal and a Supplemental Register. Trademarks that are ineligible for registration on the Principal Register may be registered on the Supplemental Register if they are capable of acquiring distinctiveness with respect to an applicant's goods and/or services.

3. Classification

Goods and services are classified according to the International Classification System. Applications should designate the appropriate class numbers for their goods or services. A single application may include goods and/or services in more than one class. A fee must be paid for each class included in the application. Applications must also include a specific, definite, clear, accurate and concise identification of goods and services. The United States requires a high degree of specificity often not required in other countries. Applicants must choose the wording for the identification of goods and/or services carefully because this wording determines the scope of the rights afforded by the application and any subsequent registration that is issued. This wording may not later be amended by proposed wording that expands this scope of the original wording at the time the application is filed. In Madrid extension requests, applicants may not add additional classes or move goods and/or services to a different class, even if the applicant has misclassified those goods and services. Since the classification of goods and services is sometimes used by examiners to search for conflicting marks, errors in the classification of goods and services may have significant implications for trademark owners.

4. Defensive Marks

Lanham Act was amended in 1988 to require the bona fide use of a trademark in the ordinary course of trade. Such use may not be made, “merely to reserve a right in a trademark.” This provision thus precludes the registration of a trademark without legitimate use merely to prevent others from registering the same or a similar mark for the same or similar goods and services. However, use of a mark is not required to file an application if filed based on intent to use, and the USPTO suspends applications that conflict with previously filed applications. Therefore, a bona fide application for registration filed by a trademark owner who is not using a trademark has the effect of temporarily preventing others from registering the same or a similar mark during the period allowed for the required filing of a statement of use or amendment to allege use. However, if no use is shown within the required time, applications filed with only intent to use the mark in commerce will be deemed abandoned. Applicants that are filed solely under Section 44 (Paris Convention applications) or Section 66(a) (Madrid Protocol applications) do not have to show use in commerce to register a mark. However, maintaining such registrations requires a showing of use or excusable nonuse. Therefore, although it is not possible to register a mark and maintain such registration without use, it is possible to temporarily maintain a bona fide application without use when filing under Section 1(b) or to obtain a temporary registration without use, when filing under Sections 44 or 66.

5. Filing Requirements

Use or intent to use applications must include the following: (1) name of the applicant; (2) address for correspondence; (3) clear drawing of the mark; (4) list of the goods and/or services; and (5) filing fee for at least one class of goods or services. Applications that do not include all of the above minimum requirements will not be accepted by the USPTO and will therefore not be given a filing date and will not be examined. In such instances, the USPTO will notify the applicant that the application is not acceptable and will refund any fee paid. An application will be considered filed as of the date on which it is received by the USPTO, provided the minimum filing requirements are met.

6. Review Procedures

Examiners review the application for basic filing requirements and eligibility for registration. Examiners also review applications for each of the following general requirements: (1) acceptability of the drawing of the trademark and any necessary character claim, colour claims, colour description and/or trademark description, translation, and agreement between the mark and any required specimen; (2) completeness of owner and entity information; (3) acceptability of identification of goods and/or services and proper classification; (4) correct filing basis and dates of use, if applicable; (5) acceptability of any required specimen(s) showing use of the trademark; (6) acceptability of the declaration, including the signature; and (7) acceptability of the trademark for registration on all statutory grounds, including both relative and absolute grounds. Examiners review the specimen showing use of the trademark for applications filed based on use of the trademark in commerce.

7. Advertisement and Recordation

If the examiner approves a trademark for publication on the Principal Register, the USPTO will publish the trademark in the Official Gazette for 30 days for opposition. Any party wishing to oppose the registration must file a notice of opposition within 30 days of the date of publication. An opposing party may also request an extension of time to file the notice of opposition. Trademarks for which an application has been filed under Section 1(b) of the Lanham Act are published when approved for publication and a second time after the applicant files a statement of use and the examiner allows the registration of the trademark. Trademarks for which registration is sought on the Supplemental Register are printed once in the Official Gazette upon registration. Marks allowed on the Supplemental Register are not subject to opposition.

8. Effect of Registration

Trademarks that are eligible for registration without limitation are registered on the Principal Register. Trademarks that are not distinctive but are in use and are capable of acquiring distinctiveness through such use may not be registered on the Principal Register but may be eligible for registration on the Supplemental Register. Registration on the Principal Register and the granting of a certificate of registration provides owners of registered trademarks with the following rights and benefits: (1) presumptive notice to third parties of the trademark owner's claim of rights in the mark; (2) prima facie evidence of: (a) the validity of the registered mark and of the registration of the trademark, (b) the registrant's ownership of the mark, and (c) the registrant's exclusive right to use the registered trademark in commerce on or in connection with the goods or services specified in the certificate (this presumption becomes incontestable after five years of continuous use, subject only to limited legal and equitable claims and defences); (3) legal presumption of constructive use such that the registrant's use of the trademark is deemed to have begun on the filing date of the application for registration and occurred throughout the United States, even if the applicant was not using the trademark nationwide at the time of filing. This presumption applies once registration is granted and gives the registered trademark priority over any other trademark owner except: (a) trademarks not abandoned and used by their owner prior to the registrant's filing; (b) trademarks for which an application has been filed prior to the registrant's application for registration; and (c) trademarks that have priority through the Paris Convention and for which the owner has claimed such priority in an application for registration within six months of the filing of such an application; (4) standing to initiate legal enforcement proceedings in a U.S. District Court; (5) assistance from the U.S. Customs Service in preventing unlawful importation of foreign goods that infringe upon the registrant's trademark; (6) the right to base applications for registration of the trademark outside the U.S. on the registered trademark. Registration on the Supplemental Register does not provide prima facie evidence of the validity of the trademark and its registration or of the owner's exclusive right to use the trademark in commerce for the goods and/or services specified. It also does not provide priority over other trademark owners based on a presumption of constructive use as of the date of filing the application for registration. The issuance of a registration on the Supplemental Register also is not preceded by publication. However, registration on the Supplemental Register nevertheless places third parties on notice of the registrant's claim of ownership of the registered trademark, and enables and requires examiners to refuse registration of confusingly similar trademarks for the same or similar goods and/or services.

9. Duration and Renewal

Registrations issued before November 16, 1989, are effective for 20 years and may be renewed for 10-year periods. Prior to November 16, 1989, these registrations could be renewed for periods of 20 years. Registrations issued after November 16, 1989, are effective for 10 years and may be renewed for 10-year periods. To remain in effect for the full duration provided by the statute, registrants must file an affidavit of continued use or an acceptable excuse for failure to use the trademark in commerce during the sixth year of the registration, measured from the publication date. Failure to file this affidavit within six months after the due date will result in the cancellation of the registration if the application was filed with a use or intent to use filing basis. A similar affidavit must be filed every 10 years during the last year of each registration term. No grace period exists for filing of the six-year affidavit of use for registrations based on an extension of protection to the United States under the Madrid Protocol. Filing of the ten-year affidavit of use may be made within a three-month grace period after the expiration of 10 years upon payment of a penalty fee.
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