Trademarks: U.S.A.

General Information

Trademark applications in the in the U.S. on the “Principal Register” can be based on one of the following basis:

  1. Section 1(a), based of actual use of the mark in commerce in the U.S.
  2. Section 1 (b), based on Intent-to-use.
  3. Section 44 (d), based on claim of Priority of a Foreign application.
  4. Section 44(e), based on a Foreign Registration Certificate.

One can also file in the U.S.A. as a Designated Country under the Madrid Protocol.

Marks can also be registered on the “Supplemental Register”. The Supplemental Register is generally reserved for marks that do not qualify for the Principal Register, usually because of being descriptive, a surname or a geographic name, and that are, in the eyes of the U.S. Patent & Trademark Office, merely “capable” of functioning as trademarks or service marks. Marks on the Supplemental Register are not published for Opposition purposes, however, they are published, once the registration is complete, in the Official Gazette, and any person can file a petition with the commissioner of the USPTO to cancel the registration.

International Agreements : Paris Convention, Nice Agreement and Madrid protocol.

Classification : Nice Classification (10th Edition); Multi-Class filings.

What is Registrable : Word marks, design marks, letters not forming words, slogans, colors (when used in specific shape or design), configurations, sounds, smells, trade dress (provided there are distinctive of the products or services).

Priority under Paris Convention : Yes

Examination : Yes – for distinctiveness (inherent & acquired) and for confusingly similar registered/filed marks.

Publication : Yes – in the official Trademark Gazette.
Opposition : Yes – within 30 days as of publication date (extensions are permitted)
Time Frame for Registration : 12 months for smooth applications.
Registration Term : 10 Years as of registration date 
Renewal Term : 10 Years – proof of use is required.
Grace Period for Renewals : 6 months with payment of a fine.

Use Requirement for filing : Yes – IF the application is based on Section 1(a) basis (based on actual use of the mark in commerce).

Cancellation : Yes – within 5 years and before the mark has become incontestable.

Marking Requirements : Optional - but stongly recommended

Assignments - Must Assignments be recorded ? No 
Can pending applications be Assigned ? Yes – applications based on Section 1(a) basis (Actual use of the mark) can be assigned, while applications based on Section 1(b) basis (intent-to-use) can be assigned after the filing of “Statement of Use” Assignments MUST include “Goodwill”. 

Important Notes :

  1. Application based on Section 1(b) basis (intent-to-use) must file an “Allegation of Use” or a “Statement of Use” of the mark in commerce before the mark is registered.
  2. All Registered mark owners are required to file a Section 8 Affidavit as proof of continued use between the 5th and 6th year anniversary of the date the registration was issued. And between the 9th and 10th year anniversary following the original registration date and any/every renewal dates otherwise the registration will be cancelled.
  3. Owners of registered marks may between the 5th and 6th year anniversary of registration date, may file a Section 15 Affidavit declaring the mark to be Incontestable.

 

Filing Requirements

Trademark/Service Mark Requirements

  1. Complete name of Applicant and form of Entity.
  2. If the Applicant is a Partnership, Corporation or Limited Liability Company (LLC): the full name of all partners/directors and State or Country of Incorporation/Formation.
  3. Drawing of the Mark, Class(es) and List of Goods ((goods description must be specific and not broadly defined).
  4. Translation of the Mark and its meaning in English language.
  5. Transliteration (phonetic equivalent) of the mark in English characters.
  6. Filing Basis:
    1- Section 1(a), based of actual use of the mark in commerce in the U.S.
    2- Section 1(b), based on Intent-to-use.
    3- Section 44(d), based on claim of Priority of Foreign application.
    4- Section 44(e), based on a Foreign Registration Certificate.
  7. If the application is based on Section 1(a) then see point No. 8 below:
  8. A) The Date of First Use of the Trademark anywhere.
    B) The Date of First Use of the Mark in U.S. Commerce.
    C) Place of Use of the Mark in U.S.A.
    D) Nature of Use of the mark (e.g. labels, tags, catalogues, flyers, brochures, letterheads, business cards, web site …etc.).
  9. If the application is based on Section 1(a): Specimen of the goods/services (i.e. photos, catalogues, labels …etc.) showing the Mark as it is actually used on these goods (for each class).
  10. Does the Applicant have any other U.S. registrations or pending applications that are similar or identical to the new application to be filed?
  11. Details of Home/Foreign registration/application for priority purposes (IF claimed).

Renewal of Trademark/Service Mark Requirements

  1. Section 9 Affidavit for renewal.
  2. Specimens of the mark as used on goods/services for each class.

Assignment Recordal Requirements

  1. Assignment Deeds executed by both parties.

License Recordal Requirements

  1. License Agreement duly executed.

Change of Name/Address Requirements

  1. Certificate showing the change of Name and/or Address.

 

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