Trademark
A trademark is a unique sign that identifies the goods or services of an individual or a company. It dates to ancient times when manufacturers began to identify their products by symbols and marks. Thereafter, these marks evolved into today’s system of trademark registration and protection.A trademark is a unique sign that identifies the goods or services of an individual or a company. It dates to ancient times when manufacturers began to identify their products by symbols and marks. Thereafter, these marks evolved into today’s system of trademark registration and protection.
Trade mark Registration process in USA
Before you apply for a trade mark you must carefully choose your mark. It forms the first step of trade mark registration process. Choosing the right mark is important as not every mark is registrable before the United States Patent & Trademark office(USPTO). When choosing a trade mark one must keep in mind whether the trade mark is registrable and how difficult it would be protect your mark. The applicant must identify the format of their mark along with the good or services to which the mark applies.
Trade mark Search
Most trade mark applications are rejected because the proposed trade mark is similar to an already registered trade mark. The reason behind such rejection is that it may cause confusion in the minds of the customer about the source of the goods or services. Thus, before applying for a trade mark an applicant should conduct a thorough trade mark search to check whether someone else is already using a similar trade mark. For this, the applicant should conduct a search on the Trademark Electronic Search System (TESS) on the database of the USPTO. By conducting this search the applicant ensures that the proposed trade mark is unique and there is no room for confusion.
Filing basis
Before you proceed with the application you must provide a basis for your filing. It is a basis under the Trademark Act upon which the applicant has filed a trade mark or service mark before the USPTO. One or more fling basis must be included in the application. There are four filing bases, each having different requirements that must be met before proceeding with the application. They are:
• Use in commerce basis
• Intent to use basis
• Foreign registration basis
• Foreign application basis
If your application does not include one of the four bases mentioned above then the USPTO will require the applicant to amend his application and add one of the four bases.
Filing the application
To apply for a trade mark in the US you can use the database of the USPTO. The Trademark Electronic Application System (TEAS) on the database of the USPTO can be used to complete the initial application. The applicant can use either the TEAS Plus or TEAS Standard. The applicant can track the progress of his application through the Trademark Status and Document Retrieval (TSDR) system. The applicant must check the status of the application every 6 months to not miss any filing deadline.
Examination
After the USPTO determines that the applicant has met the initial filing requirements, a serial number is assigned to the application, and it is sent to the examining attorney. The examining attorney then examines the application to check if it complies with all the rules and statues and includes the prescribed fee. If the examining attorney determines that the applicant’s mark should not be registered, then a letter will be issued to the applicant explaining the substantive reasons for refusal and other deficiencies in the application. The applicant must issue a response to the USPTO within 6 months from the date of receiving such communication from the examining attorney. Otherwise, the application stands cancelled.
Publication of the mark
If no objection is raised by the examiner or if the applicant overcomes all objections, then, the examining attorney approves the application for publication in the “Official Gazette” which is a weekly publication of the USPTO. The USPTO sends a notice of publication to the applicant stating the date of publication. After the publication of the mark in the gazette, any third party may file an opposition within 30 days or request an extension of time to oppose. An opposition proceeding takes place before the Trademark Trial and Appeal Board, an administrative tribunal under the USPTO. If no opposition is filed or the opposition has failed, then the application moves to the next stage of the registration process. The applicant may receive the official notice of the next status of the application after three or four months from the date of notice of publication. Meanwhile, the applicant should check the status of his application through the TSDR system.
Issuing the Registration certificate
If the mark is based on use in the four applicable bases and no party files an opposition or request an extension of the time to oppose, the USPTO will register the mark and the applicant will receive a certificate of registration. After the registration of the mark, the owner of the mark must file specific documents to keep the registration active.
Notice of allowance
If a mark has been published with the applicant’s bona fide intention to use the mark in commerce and no third-party files an opposition or requests an extension of time to oppose, the USPTO issues a notice of allowance within 8 weeks after the publication of the mark. The applicant then must use the mark in commerce and submit a statement of use (SOU) within 6 months from the date of notice of allowance. The applicant may also request an extension of time of 6 months to file the statement of use.
When an applicant receives a notice of allowance, it does not mean that the application has been registered. A notice of allowance is a written statement from the USPTO that has survived the opposition period and has been allowed. A notice of allowance is only issued in applications that intend to use the mark in commerce under Section 1(b) of the Trademark Act. A registration certificate is issued within generally 2 months after the SOU is approved.
Validity of trademark
A trademark registration in USA is valid for 10 years from the registration date. Yet, during the 5th and 6th year, an affidavit of use and specimen of use should be filed after the date of registration to avoid cancellation.
