The process of trademark registration in the United States includes the 04 following steps: Conducting a trademark search; Filing a trademark application; Monitoring the trademark registration process; Renew the Certificate of Registration.
Step 1: Conducting a trademark search
The purpose of conducting a trademarks search is to foresee the possibility of being granted protection. There are two options of trademark search:
First option: Submit the trademark sample with the name of the good or business service to our firm for a Preliminary Search (e.g. the mark LaFlame for speakers).
Second option: Conduct an online search on the website of the U.S Patent and Trademark Office :
Step 2: File a trademark application
Because the U.S. is a member of the Madrid Protocol, applicants may file their applications in two ways: file an application to the U.S. Patent and Trademark Office (USPTO) or file an application through the Madrid system.
Trademark registration dossier includes:
- Application (We provides drafting service);
- Information of the applicant(s);
- Samples of trademark (representations of the trademark);
- List of goods/services;
- Basis for filling (use in commerce/intent to use/application or certificate in foreign country/international application)
- Power of Attorney (We provides representative service);
- Other necessary documents for certification and collective mark registration applications
Necessary document for application with use in commerce basis:
- Statement of Use;
- Date of first use (in anywhere);
- Date of first use in commerce (the first day when the goods/services bearing the mark being sold/provided between two states or between the U.S. and another country;
- A specimen (to prove the usage of the mark).
Necessary document for application with intent to use basis:
- Statement of Use.
Necessary document for application with foreign application/certificate basis:
- Documents to prove priority rights;
- Statement of use.
Necessary document for application filled through the Madrid system:
- Required documents according to the Madrid system’s regulations.
- Statement of affirmation of intent to use (beside the MM 18 Form on intent to use)
Step 3: Monitoring the application
After approximately 03 months from the filling date, the examination process will be started. Generally speaking, the examination process includes the following stages:
Applicants should pay attention or authorize their representatives to monitor the status of the application regularly and respond to USPTO notices promptly.
During the examination process, USPTO may issue a office action when necessary. Upon receipt of these notices, the applicant must respond within 06 months from the date of notification. Failure to respond timely or convincingly will result in the application being rejected. And the fees will not be refunded.
Within 30 days from the date of publication, if a third party submits an objection, the applicant will have to participate in the procedure of reviewing the objection. This is a similar procedure to court proceedings but is conducted in front of the Trademark Trial and Appeal Board (TTAB).
If you pass the stage of publication to receive an objection, depending on the basis of the application, the application will proceed to the following stages:
- Use in commerce application; based on foreign application/certificate application; international application: Certificate of Registration will be issued.
- Intent to use application: Notice of Allowance will be issued. Within 06 months from the date of notification, the applicant shall do the following:
+ Submit a Statement of Use if the trademark has been used in commerce; or
+ Start using the trademark in commerce and submit the Statement of Use; or
+ Submit a request for extension. If successfully submitted, this request will give the applicant another 6 months to begin using the trademark in commerce.
The Statement of Use will be reviewed by the USPTO. An office action will be sent to the applicant if necessary and the application owner will need to respond within the time limit stated in the notice. Once the Statement of Use is accepted, a Certificate will be issued.
Step 4: Renew the Certificate of Registration
The validity of a trademark Certificate in the United States can be maintained indefinitely, if the owner fulfills the following procedures:
- Submit a Statement of Use and a specimen showing actual commercial use of the trademark between the 05th anniversary and the 06th anniversary of the protection term
- Submit renewal documents within 01 year before the 10th anniversary of the protection term;
- Submit renewal documents every 10 years within the same period.
The validity of trademark Certifications in the United States is closely linked to the actual usage of the trademark, so it is always necessary to document your actual usage of your trademark for renewal purpose.
+ Required documents for registering TM in USA.