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   Trademark FAQ
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  1. What is a trademark?
  2. How is a trademark application filed in the United States?
  3. How much does it cost to file a trademark application in the United States?
  4. What about international trademark filings?
  5. What is needed to file a trademark application in the U.S.?
  6. What happens after filing?
  7. How long does it take from filing to the examiner’s review?
  8. Can you respond to the examiner?
  9. What is the cost to respond to the office action?
  10. What happens after the response to office action?
  11. Does the trademark then get registered?
  12. So how long does it take from filing until registration?
  13. Are there any requirements after registration?
  14. How do I indicate my trademark rights?
  15. Can I use my trademark in other countries?

 

What is a trademark?

  • Trademarks and service marks are words, phrases, symbols, designs, etc., which are used in commerce to designate the source, sponsorship or affiliation of the goods or services offered under the marks.
  • Trademarks are used on goods; service marks are used in connection with services.  The filing and registration process for trademarks and service marks is the same.  As a result, we refer to trademarks and service marks as simply “trademarks” in this FAQ.
  • Trademarks symbolize the “goodwill” in the trademark owner’s goods or services that are offered under the mark.

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How is a trademark application filed in the United States?

  • It is highly recommended that search results be obtained prior to filing.  A search will determine whether there are any previously filed or registered applications that are confusingly similar to the mark for which an application is to be filed.  If a prospective trademark is likely to cause confusion with a registered mark, or one that has been previously filed with the U.S. Patent and Trademark Office ("PTO"), then registration may be refused.
  • Once search results have been obtained, and properly reviewed by an attorney, a federal trademark application is filed with the PTO.  The application will specify the trademark to be registered, and the goods or services used in connection with the mark.
  • For a trademark that is actually in use in commerce, a “use based” application is filed pursuant to section 1(a) of the Trademark Act.  A use-based application requires the applicant to designate the first date that the mark was used anywhere, and the first use of the mark in commerce.  Additionally, a specimen, or example, of such use in commerce must be filed with the application.
  • An intent to use application is filed pursuant to section 1(b) of the Trademark Act.  An intent to use (ITU) application is filed by an applicant who has a bona fide intention to use a particular trademark in commerce.  An ITU application does not specify dates of first use, and need not include a specimen of use at the time of filing.
  • There is no difference in the initial filing fee for a use based application and an ITU application.  After an ITU application is approved, however, a statement of use must be filed pursuant to section 1(d)(1) of the Trademark Act, in order to obtain registration of the mark.  The PTO currently charges a filing fee of $100 for statements of use.  Extensions of time can be obtained for filing the statement of use, but only for a specified time period.

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How much does it cost to file a trademark application in the United States?

  • The PTO filing fee is currently $325 for an electronic application or $375 for a paper application, per class.  The PTO also instituted a lower filing fee of $275 per class, for applicants who apply pursuant to the “TEAS Plus” system, which, among other things, has stricter requirements for the designation of goods and services in the application. 
  • Trademarks are organized into International Class numbers (for example, computer software is in Class 9, clothing in Class 25, toys in Class 28, etc.).  If an application is filed in more than one class, then the PTO assesses additional fees for each class that is included.  
  • For example, if an application is filed electronically and two classes are identified, then the PTO’s assessed filing fee is $650.00.  If the TEAS Plus system is used for two classes, the PTO filing fee is $550.00.  If a paper application is submitted in which two classes are identified, the PTO’s filing fee is $750.00.
  • The total cost for filing an application is dependent on various factors, such as the nature and extent of the search process, the availability of specimens of use, the clarity of the recitation of goods or services, etc.  Depending on such circumstances, then, an applicant may spend between $850 and $1,700 to file an application in one class, inclusive of attorneys’ fees, search costs and PTO fees.

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What about international trademark filings?

  • Each country has its own laws regarding trademarks, and application must be made for a trademark to be applicable in a particular country
  • We can prepare trademark applications for you in various countries in a number of ways, such as through a Community Trademark application (CTM) that is applicable to all the countries in the European Union, through a central filing with the PTO under the Madrid Protocol, or by utilizing our extensive network of contacts in the various countries for individual filings.
  • A CTM application will typically cost between $3000 and $4500.
  • The cost for filing under the Madrid Protocol will vary depending on the number of member countries selected, with the filing fee generally between 400 and 700 Swiss francs per country selected.
  • The cost for individual applications in other countries varies greatly from country to country, generally ranging between $1500 to $3000 per application.
  • Most countries are “first to file” jurisdictions, which means that unlike the U.S., a period of use prior to filing a trademark application is not a substantive basis for objecting to a third party’s application for the same or similar trademark. It is therefore very important to file early in any country in which you will be doing business under the relevant trademark.

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What is needed to file a trademark application in the U.S.?

  • A use-based application is to include the following information:  (a) the applicant’s domicile and citizenship, (b) the date of the applicant’s first use of the mark, (c) the date of the applicant’s first use of the mark in commerce, (d) the goods in connection with which the mark is used, and (e) a drawing of the mark.  In addition, the application shall include a verified statement by the applicant indicating that the person making the verification, either on his or her own behalf or on behalf of the trademark owner, is the owner of the mark sought to be registered, that the facts recited in the application are accurate, that the mark is in use in commerce, and that no other person has the right to use that mark, or one similar to it, in commerce in association with goods or services that would be likely to cause confusion with the applicant’s own mark.  See section 1(a)(2) and (3) of the Trademark Act.
  • An ITU application has similar requirements:  (a)  the applicant’s domicile and citizenship, (b) the goods in connection with which the applicant has a bona fide intention to use the mark, and (c) a drawing of the mark.  A similar verification is required by the applicant to that referenced above:  the person making the verification (individually, or on behalf of the owner) is entitled to use the mark in commerce, the applicant has a bona fide intention to use the mark in commerce, the facts recited in the application are accurate, and no other person has the right to use that mark, or one similar to it, in commerce in association with goods or services that would be likely to cause confusion with the applicant’s own mark.  See section 1(b)(2) and (3) of the Trademark Act.
  • A specimen of use must be filed in connection with a use-based application.  Different specimens of use are required, depending on whether the mark is used for goods or for services.  With respect to goods, common specimens include labels that show the mark affixed to the goods, packaging bearing the mark, owner manuals shipped with the goods, etc.  With respect to specimens for service mark applications, commonly used specimens include advertising and promotional material for the services, signage, or web site printouts showing the offering of the relevant services via the web site.  There are many different types of specimens, and the appropriate specimen of use often depends on factors such as what specific goods or services are offered under the mark, how they are advertised or sold, where they are advertised and sold, and in what medium.
  • As noted above, a specimen of use does not have to be filed with an ITU application.  A specimen of use must be provided with a statement of use prior to the registration of such mark.

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What happens after filing?

  • After the trademark application is filed, it is assigned to an examiner at the PTO.  The examiner looks at the application for compliance with the Trademark Act, and to determine the registrability of the mark itself.
  • After a review of the application, the examiner typically issues an “office action,” which is the official response to the trademark application.
  • The office action may contain procedural objections to the application, such as misidentification of the international class number, or requesting a revision to the recitation of goods or services.
  • The office action may include a substantive refusal, though, such as finding a likelihood of confusion between the applied-for mark and a pre-existing application or registration.
  • The examination process in other countries varies from country to country.  Some international trademark offices provide for substantive examinations, others do not.  In instances in which there is no substantive examination by the trademark office, objecting to the registration of a particular mark is left solely to interested parties (such as those who may own a similar mark).

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How long does it take from filing to the examiner’s review?

  • Generally, an office action will be issued by the PTO about 5-6 months after the filing date of an application.
  • The examination period varies greatly with respect to international filings.  Under the Madrid Protocol, for example, each member country is generally required to accept or reject an application within 18 months of the filing date.

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Can you respond to the examiner?

  • Yes.  After an office action is issued, it should be reviewed to determine the nature of the response needed. 
  • The response to office action must be filed within six (6) months after the office action is issued by the PTO.  The deadline to respond to an office action cannot be extended, however, a late response can generally be filed within a certain time frame upon application and payment of a penalty fee.
  • If a timely response is not filed, the application will go abandoned.  The filing fee is not refunded by the PTO in the event of an abandonment.

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What is the cost to respond to the office action?

  • The cost for responding to the office action depends on the nature of the examiner’s objections.
  •  If the office action is procedural in nature, then the cost is less.  For example, an examiner may request amendment of the goods or services, ask for citizenship of the applicant, or ask for a disclaimer of some part of the trademark.  Such objections are procedural in nature, and can be handled in less time, and at less cost.  Responses to such office actions generally cost between $200 to $600.
  • An office action may object to substantive aspects of the trademark.  For example, the examiner may find pursuant to section 2(d) of the Trademark Act that the applied-for mark resembles another mark registered or previously applied for such that the subsequent mark is likely to cause confusion, mistake or to deceive others.  The examiner may find that the applied-for mark is merely descriptive or deceptively misdescriptive, that it is primarily geographically descriptive, or that it is primarily merely a surname.  In such event, handling the response to the office action takes more time and effort, and is thus costlier.  Typically, a response to a substantive office action will cost between $600 and $1,500.

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What happens after the response to office action?

  • Once the examiner reviews the office action, it may persuade him or her that all issues have been resolved.  If the issues have not been resolved, the examiner will issue a second office action, which may or may not be “final.”  The applicant may respond to the second office action.
  • Once the issues in the office action are resolved to the satisfaction of the examiner, the examiner will send a notice that the trademark application should be sent to “publication.” 
  • After the issuance of the notice of publication, an application is physically listed or published in the trademark Official Gazette.  The Official Gazette lists all marks that are to be registered at that time.  Its purpose is to provide notice to those who may have rights that the registration would impact.
  • If a person or entity has rights that would be affected by the published application (for example, someone who is using a similar mark in commerce), that person or entity has thirty (30) days from the Official Gazette publication date to either oppose registration, or to file a request for an extension of time to file an opposition.   

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Does the trademark then get registered?

  • If no opposition is lodged (or no request for extension is filed), the PTO will issue a Notice of Allowance.  This means that the mark has been examined, has been published, no opposition was filed, and the mark appears to be entitled to be registered. 
  • A Notice of Allowance is generally issued a month or two after the expiration of the 30 day period in which to file an opposition (or to request an extension of time to file the opposition).
  • The registration certificate is printed after the Notice of Allowance has been issued.  It generally takes a few months after the Notice of Allowance date to receive the registration certificate.

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So how long does it take from filing until registration?

  • If there are no substantive office actions issued by the examiner at the PTO, and no third party files any opposition to registration of the mark, then the process from filing to registration would take about one (1) year, at best.
  • It is not uncommon, however, for it to take between 1 ½ to 2 years from application to registration.  If an opposition is filed, the process can take many years, depending on whether the parties litigate the opposition or seek a quick resolution of the opposition proceeding.
  • To recap, the general application process is as follows:
    1. Trademark search performed
    2. Trademark application filed
    3. Office action received from the PTO (5 – 6 months after application is filed)
    4. Applicant files response to office action (within 6 months of issuance of office action)
    5. Notice of publication issued by the examiner at the PTO
    6. Application published in the PTO's Official Gazette
    7. Notice of Allowance issued by the examiner at the PTO
    8. Applicant files a Statement of Use (for ITU applications)
    9. Registration certificate issued by the PTO

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Are there any requirements after registration?

  • Yes.  Between the fifth and sixth year after the registration of the mark, an affidavit or declaration must be filed with the PTO pursuant to section 8 of the Trademark Act regarding the continued use of the mark.  The affidavit or declaration sets forth the goods or services recited in the registration, or which the mark is currently being used, it provides a specimen showing the continued use of the mark in commerce, and includes a fee for such filing (currently, $100 per class). 
  • Pursuant to section 9 of the Trademark Act, the registration is valid for a period of ten (10) years, and subject to compliance with section 8 of the act, the registration can be renewed at the end of that ten year period for additional ten year periods, if the trademark is still in use in commerce.
  • The PTO fee for filing a renewal of a registration is currently $400 per class.
  • In the U.S., a trademark can be cancelled for "fraud on the trademark office" if the mark is registered for a variety of goods or services, but not all of those goods or services are actually offered under the mark.
  • In Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), the PTO ruled that including a greater amount of goods or services in an application than is actually offered in commerce requires cancellation of the entire registration, not just deletion of the portion of goods/services that were not offered under the mark.  In such circumstances, a party might commit "fraud" without knowing it, or even intending to do so.
  • As a result, prior to filing a statement of use, it is imperative that only those goods and services actually being offered should be claimed in the trademark application.  Claiming a broad general category of goods or services could leave the registration vulnerable to cancellation.  Specificity with respect to what is actually offered is therefore key.
  • Trademark owners should review all their goods and services offered under a particular mark not only prior to registration, but also in connection with filing declarations of continued use or applications for renewal.

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How do I indicate my trademark rights?

  • It is important to remember that a trademark must be used in connection with the goods or services specified in the application.  If some of the goods or services are no longer being offered, it is important to amend the application or registration to delete the goods or services that are no longer being offered.  This can be done prior to filing the statement of use, or in connection with the declaration of continued use or renewal of the mark.  For example, if the mark ACE is registered for use in connection with “crayons, pencils, colored pencils, pens and erasers,” but eventually the owner stops selling crayons and pens under that mark, crayons and pens should be deleted from the list of goods registered under the ACE mark.  Otherwise, as per a string of recent decisions from the Trademark Trial and Appeal Board, the registration is subject to cancellation for “fraud on the trademark office.”
  • Pursuant to section 9 of the Trademark Act, the registration is valid for a period of ten (10) years, and subject to compliance with section 8 of the act, the registration can be renewed at the end of that ten-year period for additional ten-year periods, if the trademark is still in use in commerce.
  • The PTO fee for filing a renewal of a registration is currently $400 per class.

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Can I use my trademark in other countries?

  • Each country has its own trademark laws.  Do not assume, for example, that registration in the U.S. allows for use of the registered trademark or of the federal registered symbol ® in other countries.  In fact, some countries have penalties that may apply if a mark is not registered there, but a registration symbol is nonetheless used. 
  • To extend trademark rights into another country, an application should be filed pursuant to that country’s applicable laws or according to a multilateral treaty (for example, via a Community Trademark Application for the European Union, or via the Madrid Protocol for over 60 countries who are signatories to that treaty).

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