So, rendering (offering) your services in multiple states satisfies this requirement. Yet also it seems that the requirement can be met without offering your services in multiple states or in multiple countries, by “rendering your services in commerce.”

Rendering Trademarked Services in Commerce

So what the heck does rendering the services in commerce mean? Well, only trademarks used in interstate commerce are entitled to federal trademark registration, because the federal government only has the power to regulate interstate commerce (it’s in the Constitution!). “In commerce” here is differentiated from commerce in multiple states or in the U.S. and a foreign country, so it mean intrastate service that nevertheless qualifies as “interstate” commerce.

Intrastate Hotel, Dining, and Automotive Services Are Interstate Commerce

The TMEP explains: “if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act.” TMEP § 901.03. Thus, automotive, restaurant, and hotel services are generally considered to be used in commerce because they are available to customers traveling interstate on federal highways, and thus are subject to federal regulation.

Intrastate Services That Target or Serve Out-of-State Customers Qualify As Interstate Commerce

Other services offered in only a single state may also be considered to be rendered in commerce if a sufficient inter-state nexus can be shown. Evidence that the services are advertised in multiple states or are used by residents of different states is effective in demonstrating that the services have been rendered in commerce.

Internet Services Are Interstate Commerce

Services offered over the Internet are considered interstate commerce, “since the services are available to a national and international audience who must use interstate telephone lines to access a website.” TMEP § 901.03

Summary

In order to register your trademark with the United States Patent and Trademark Office, you must use your trademark in connection with services offered in interstate commerce. That means the services must either be offered in multiple states, or in the U.S. and a foreign country, or that the services are offered in a single state, but to out-of-state customers.

And if your services do not fall under any of those possibilities, but you can think of another way to tie your services to interstate commerce, the Trademark Office could allow your trademark to be registered as well.

So what does it mean to use a trademark “in commerce”? Is it sufficient to use your trademark on your website? The answer is, sometimes yes and sometimes no. It depends on whether your mark is a plain old trademark or a service mark. A service mark is a trademark that is used to sell services, rather than physical products.

To register a service mark, you must show that you have used the mark in the advertisement or sale of a service to prospective customers and that you were prepared to provide the service at the time of the advertisement.

The Rule Regarding Use in Commerce of a Service Mark

TMEP § 901.01 states that “a mark shall be deemed to be in use in commerce… on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”

In other words, for a service mark use in commerce requires:

1. Display of the service mark in the sale or advertisement of services, and
2. Rendering the services in commerce or in multiple states or the U.S. and a foreign country

Let us ignore the second part of #2 for now (it’s a doozy) and parse the rest of that.

1) Display of the Service Mark in the Sale or Advertising of Services

To successfully claim use of your service mark and achieve a federal registration, you must show that you have used your mark in an advertisement or sale of your services. This is generally an easy requirement to fulfill. Display of your service mark on your website, where your website advertises your services, generally is sufficient to satisfy it, and is the most popular way to do so.

Advertisements Are Not Sufficient to Show Use in Commerce For Trademarks

Note that this is in contrast to the rule for trademarks (used on goods/products), where use in an advertisement is NOT sufficient and therefore use on a website often does NOT satisfy the requirement. Many business owners get in trouble with this distinction and do not understand why their website is not sufficient to show use. Nevertheless, it usually is not (consult your attorney to find out for sure).

Mere Preparation to Use Is Not Sufficient to Show Use in Commerce of  a Service Mark

What does not satisfy this requirement is preparation to use the service mark. “[m]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying
to register the mark.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Intermed, 197 USPQ at 507).

Such acts as soliciting the support of others, issuing a detailed announcement using the service mark to inform and update individuals about the service’s status, and hiring a fundraising firm to raise money for the service are insufficient.

Use in Commerce Requires Advertisement or Sale to Customers

Advertising your service to potential partners, investors, or affiliates is not sufficient to show use in commerce. Rather, “there must be an open and notorious public offering of the services to those for whom the services are intended.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Intermed, 197 USPQ at 507)(emphasis added).

2) Rendering the Services

Mere advertisement of your services, in and of itself, is not sufficient to satisfy the federal trademark registration requirement of use in commerce for service marks. You must also actually be prepared to provide the services you are advertising.

Advertising a Service You Will Soon Provide is NOT Sufficient

“Without question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration. Instead, the advertising or publicizing must relate to ‘an existing service which has already been offered to the public’… The use in advertising which creates a right in a service mark must be advertising which relates to an existing service which has already been offered to the public.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982))

The Services Advertised and Rendered Must Be The Services Listed in Your Trademark Application

Be careful when listing the services you provide or intent to provide. You will have to show that you have advertised and are ready to perform THOSE services. The listed services (or goods) can be changed, but only to narrow or clarify what you have listed, and never to broaden the list.

Thus, going from “Clothes” to “shirts” is okay, but going from “shirts” to “clothes” is not. That is one reason to leave your listing of services broad if you can, particularly if you are uncertain exactly how to describe the services you are offering or what service you actually will provide.

In Aycock Engineering, the registrant’s federal trademark registration was canceled because his activities did “not constitute a service that falls within the scope of our definition of the recitation of services.” Mr. Aycock’s listed services covered  “only the arranging of flights between an air taxi operator and a passenger”, whereas his activities involved “efforts to arrange a network of air taxi operators.”

Conclusion

The failure to properly show use in commerce of your trademark can result in rejection of your application for registration or cancellation of your federal registration years later. Do not take chances with formalities like these, work with a trademark attorney early on to ensure the strength of your trademark rights, and learn from the mistakes of others.

The transfer of a trademark to a new owner, for compensation or otherwise, is called an assignment. 37 C.F.R. §3.1. If the trademark in question is registered or pending registration, the assignment should be filed with the Trademark Office so that its records will reflect the change in ownership.

Trademarks That Have Been Used In Commerce

If you have already used your trademark in commerce, the assignment rules for your trademark application are the same as for a registered trademark. A registered trademark can be assigned, as long as it is transferred along with “the good will of the business in which the mark is used, or that part of the good will of the business connected with the use of and symbolized by the mark.” TMEP § 501.01

So if you have a trademark for a shoe brand and part of your business is selling your branded shoes, you can sell your shoe trademark to another company, but you must also sell the portion of your business that sells shoes under that trademark. You cannot simply sell the brand name to the other company to place on their own shoes and then continue selling your shoes under a different name.

The reason for this is that  trademark rights exist to avoid consumer confusion. Companies are not granted exclusive rights to brand names just because they were they first to think them up. Rather, the purpose of exclusive trademark rights is to allow consumers to identify products that they are familiar with and to expect a consistent source for the product. Because of trademark rights, when you buy a computer with the Apple logo on it, you know that it is made by the Apple Computer Company and not some fly-by-night computer startup.

The trafficking of trademarks apart from the business or goodwill they are associated with is antithetical to this purpose. If Apple sold the apple logo to some other company and the company started using the logo on their own, completely different computers, this would be very confusing for consumers. Therefore this type of trafficking in brand names and other trademarks is not allowed.

Intent-to-Use Applications

You can apply for a trademark registration before you being using that trademark in commerce. Although a registration cannot be issued until use begins, the application will “hold your place in line” and prevent other people who thought of the trademark after you from using it.

However, an intent-to-use application cannot be assigned unless it pertains to an ongoing and existing business (or portion of a business) and is transferred along with that business. TMEP § 501.01 So if you have an active business selling herbal supplements and apply for a new trademark you intend to use with your business, you can sell or transfer that trademark application along with your business to another company.

On the other hand, if you intend to start a business selling herbal supplements in the future, and apply for a trademark for that business, you cannot assign your application to anyone else. You cannot even assign your application from yourself to your new LLC that you own 100% and intend to use to start your business. See, for example, Opposition No. 118,181, Pfizer, Inc. v. Gregg Hamerschlag.

Avoiding an invalid assignment is critical. If you assign an application when you should not, the result is not an invalidation of your assignment, but an invalidation of your application!

Without this requirement, an applicant would be free to assign an intent-to-use application to anyone, since the goodwill that would have to be transferred is trivial or nonexistent. Trademark speculation, like domain name speculation, would probably be rampant, with entrepreneurs registering hundreds or, like modern domainers, hundreds of thousands, of potentially valuable trademarks and holding them for sale to actual businesses. The requirement of an ongoing business avoids the trafficking of trademarks that the goodwill requirement is meant to avoid.

More reading:

U.S. Assignments (International Trademark Association)

Avoiding illegal trademark transfers: introducing the assignment-in-gross (Florida Bar Journal)

What should you do? Do you have to drop the name? Change it? Contact First User? Or can you just go ahead with your registration and marketing plans as if nothing had changed? There are a few factors you must weight when making that decision:

1. What First User can do to you if they find out you are using a similar trademark
2. How likely First User is to find out or decide to go after you
3. Just how good the name you came up with is

The first factor is the potential cost to you of using the trademark, the second is the probability of incurring that cost, and the third factor is the benefit from using that trademark. You can then make the classic calculation: is the potential cost multiplied by the probability of incurring that cost greater than the expected benefit to you?

1) Penalties for Trademark Infringement

If you decide to begin using a trademark (business name, logo, brand name, etc.) that is confusingly similar to the trademark of another business in the U.S., that other business can cause you a lot of problems. It can stop you from registering your trademark and it may be able to stop you from using the trademark.

• Preventing You From Registering Your Trademark

Trademark Examining Attorney Refusal to Register

The Trademark Office will not register a trademark if it is confusingly similar to another registered trademark. Therefore, if First User has registered their trademark, it may be difficult for you to get your application allowed by the PTO. The Trademark Examining Attorney assigned to your application is likely to refuse registration of your mark.

Trademark Opposition / Cancellation

Even if the PTO allows your trademark application, First User can oppose your registration, regardless of whether it has a registration and regardless of where in the U.S. it is located. A trademark opposition is an administrative proceeding before the Trademark Trial and Appeal Board (TTAB) and is essentially a mini-trial.

To go all the way through an opposition you can expect to spend $50,000 to $100,000, depending on what law firm you use. If First User can prove that your mark is confusingly similar to theirs and that it began using the mark in commerce before you, it is likely to succeed in preventing your registration.

Even if your mark is successfully registered without an opposition, First User can come back and petition to cancel your registration up to five years later. A cancellation proceeding is very similar to an opposition in expense, etc.

• Preventing You From Using Your Trademark

Although registering your trademark is very important, the right to use your trademark is even more important. If First User has registered their trademark, they have exclusive rights to that mark nationwide. Regardless of whether you are operating in the same geographic area, your use of a confusingly similar mark in the United States constitutes trademark infringement.

In that case, First User can sue you and, if it can prove confusing similarity, force you to stop using your trademark. You would then have to redo your marketing materials and marketing campaign and devote a lot of money to rebranding.

As you are probably beginning to understand, it is generally a bad idea to use a trademark that seriously conflicts with an existing registered trademark. More frequently, you will have to make a decision regarding a trademark that is used by another business, but not registered. In that case, you can only be sued for trademark infringement if you do business in the same geographic area as First User, and only in state court. First User will have to prove confusing similarity and first use.

Defending a trademark infringement lawsuit can easily run six figures. Monetary damages could also be awarded against you, although they are uncommon.

2) Likelihood That Trademark Infringement Will Be Discovered or Prosecuted

Whether First User is likely to discover your use of a similar mark or pursue you if they do depends on a number of factors, including:

• Is First User big or small?
• Is First User brand-focused?
• How close are the marks / how strong is First User’s legal position?
• Does First User do business in your geographic area?
• Do you have a significant web presence?
• Is First User a direct competitor?
• How big will your business become, and how fast?

These factors will be discussed in more depth in a subsequent post. Generally, large corporations are very likely to find out about trademark infringement and take action, whereas very small businesses are very unlikely to.

If you are able to register your trademark and keep that registration for five years, your registration will become incontestable, meaning that First User will no longer be able to cancel it for confusing similarity to their own mark. Your registration will also allow you to prevent First User from expanding beyond their geographic area.

3) How Important Is It To Keep Your Trademark?

Finally, you should consider the importance of the trademark you have selected. Are you wedded to it? Would you be open to tweaking it in order to differentiate it from First User’s trademark? If there are good alternatives and you have nto spent much money on putting together your branding materials, often it is better to avoid potential conflicts by choosing a new trademark.

On the other hand, if you have a really good and meaningful trademark that you have spent money to develop and build a marketing campaign around, it may be worth taking the risk of going ahead with it. This is particularly true when the risk is low, for example if First User is a small business that is not a direct competitor and is unlikely to discover the similarity.

]]> http://patents101.com/2010/01/trademark-business-name-in-use/feed/ 0 http://patents101.com/2009/08/protect-trademarks-foreign-countries-4-madrid/ http://patents101.com/2009/08/protect-trademarks-foreign-countries-4-madrid/#comments Tue, 18 Aug 2009 18:04:12 +0000 Clifford D. Hyra http://patents101.com/?p=449 In Part 1, I introduced the concept of international trademark protection and the option of filing a separate trademark application in each country of interest. In Part 2, I introduced the Madrid System, whereby a single international trademark application can be filed for registration in a number of countries. In Part 3, I continued the explanation and analysis of the Madrid System by detailing who can file using the Madrid System and in what countries trademark protection can be obtained.

In Part 4, the concluding post of this series, I examine the advantages and disadvantages of the Madrid System and make a cost comparison with ordinary filings.

What Are the Advantages and Disadvantages of Filing an Application Under the Madrid Protocol or Agreement?

The main advantage of using an international application is the reduction in time and expense over filing multiple individual applications. Only one application has to be prepared and submitted, which saves more time and attorney’s fees the more countries you want protection in. You only need to use one law firm, your domestic firm, unless you have a problem in one of the individual countries, reducing the number of lawyers you have to pay.

The system also greatly simplifies administrative tasks like making changes to the name or address of the applicant or renewing foreign registrations. With the Madrid System, such changes can be made across all countries of registration with a single administrative process, saving a great deal of time and money and reducing the chances of overlooking an application or making a mistake in one of the filings.

The main disadvantage is that an international application is dependent on the domestic application or registration on which it is based. A refusal, withdrawal or cancellation of the domestic application or registration within five years of the registration date of the international registration will result in the refusal, withdrawal or cancellation of the international registration to the same extent. This leaves the trademark owner vulnerable to a “central attack” of its trademark in the country of origin.

What is the Cost of an Application under the Madrid Protocol or Agreement?

There is an initial fee charged by the country of origin for receiving, certifying, and transmitting the itnernational applicaiton. In the United States, this fee is $100. The applicant must also pay fees directly to WIPO to cover both its examination and the examination conducted bye ach of the designated countries.

The schedule of fees due under the Madrid System can be found here and the fees of individual designated countries can be found here. These fees are charged in Swiss francs (CHF) and generally are 653 CHF for an application without color in up to three classes, or 903 CHF for a color mark, plus an additional 100 CHF for each designated Contracting Party (country). Some countries, as indicated here, charge their own fee for their designation instead of the default 100 CHF. The Swiss franc at the time of this post was 0.92 USD.

As an example, the cost of filing an international trademark application for a black and white mark in the United States designating China, Japan, and Korea would be $100 + 653 CHF + 310 CHF (China’s individual fee) + 140 CHF (Japan’s individual fee) + 223 CHF (Korea’s individual fee). The total official fees would therefore be approximately $1220. Add in the cost of your U.S. attorney and you are looking at $1,500-$2,000. By way of comparison, you can expect to pay $1,500-$2,000 for each application if submitted individually.

Thus, even when only a few countries are designated and even where these countries charge more than the typical 100 CHF, an international application can result in significant cost savings. Add in the savings from future renewals and other administrative costs and the difference becomes even more substantial.

Thus, in many instances making use of the Madrid System to achieve international trademark protection can greatly reduce your expense and decrease the likelihood of errors. In most cases these advantages outwiegh the disadvantage of vulnerability to central attack, making Madrid applications a valuable tool in your trademark arsenal.

Leave your questions and additions in the comments.

In this post, Part 3, I will continue the explanation and analysis of the Madrid System by detailing who can file using the Madrid System and in what countries trademark protection can be obtained. In Part 4, the concluding post, I examine the advantages and disadvantages of the Madrid System and make a cost comparison with ordinary filings.

What Countries Participate in the Madrid System?

There are 84 members of the Madrid Union (countries who are members of the Madrid Protocol and/or Madrid Agreement). The Madrid Protocol boasts 74 members and the Madrid agreement 56- 46 countries are members of both. The full list of member countries can be found here. An international application under the Madrid System must originate in a member country and each country designated for protection in the application must also be a member.

The United States is a member of the Madrid Protocol, but not the Madrid Agreement, and therefore U.S. applicants may not designate countries that are members of the Madrid Agreement only.

Some countries that are not members of the Madrid Union include Canada, Mexico, New Zealand, South Africa, India, Pakistan, Hong Kong, Taiwan, Malaysia, the Philippines, Indonesia, Thailand, Israel, and most of Latin America. Trademark protection in these countries can only be achieved by individual applications.

Who Can File an Application Under the Madrid System?

An applicant using the Madrid System must be “a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of” a country that is a signatory to the Madrid Agreement or Protocol. The applicant must initiate their international application in such a country.

On to Part 4… If you have any questions or additions to the material above, let me know in the comments.

Part 3 expands on the exploration of the Madrid System by explaining who can get trademark protection by using the Madrid System and in what countries. Part 4 details some advantages and disadvantages to using international applications under the Madrid System.

What is the Madrid System?

The Madrid system is a combination of two international agreements, the Madrid Agreement and the Madrid Protocol. The countries that have signed these agreements grant reciprocal rights to one another with regard to applications for trademark registration. Each allows an applicant to submit a single international application designating a number of countries in which trademark protection is desired.

This international application is examined individually by each designated country to determine whether the trademark is entitled to protection under the laws of that country. To use the Madrid Protocol or Agreement, both the country of origin and each desired foreign country must be signatories of the same agreement.

What are the Madrid Examination Procedures?

To file an international application, there must first be a domestic (or “basic”) trademark application or registration. Under the Madrid Agreement, only trademark registrations can be the basis for an international application, not applications. This is the primary difference between the two agreements and the reason that the Madrid Protocol is more popular. The international application must be filed in the same country as the basic application or registration.

This “Office of Origin” receives and certifies the international application and then transmits it to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the Madrid System, for processing and initial examination.

The application is examined by WIPO to ensure that the application complies with the requirements of the Madrid System, including those relating to the listing of goods and services and their classification, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities, which must be remedied within three months to avoid abandonment. When the international application is in compliance, the mark is recorded in the International Register and published in the Gazette.

WIPO then notifies each Contracting Party in which protection has been requested and the application is then examined by each designated country individually. Each country’s trademark office applies its own rules in evaluating the application and is free to accept or reject it on its own terms. Any subsequent interaction with a foreign trademark office is conducted directly between the applicant and the office as normal, and will typically require the assistance of counsel in the country in which the office is located.

On to Part 3- Madrid Union Membership

More Madrid Protocol and Madrid Agreement Resources

The WIPO Madrid System for the International Registration of Marks page

The USPTO Madrid FAQ page

The Wikipedia Madrid System entry

Anything I left out? Please leave your questions in the comments, or you can ask me directly on twitter, facebook, or by phone or email.

Your first step should be applying to register your mark in your home country (assuming you will do business there). Then you have a choice- you can file individual applications in each country you need, or you can file an international application under the Madrid Agreement/Protocol. This post explains the use of individual, regular applications, where the next post will delve into the details of international trademark applications.

Applying for Trademark Registration in Individual Foreign Countries

Foreign Registration Procedure

A U.S. attorney cannot file a trademark application overseas. For that, you need a lawyer of the country in which the application is to be filed. Most U.S. law firms have a network of foreign “associates”, or law firms in other countries that they work with when something needs to be filed in another country.

These foreign associates are familiar with the local rules and will be sure to place your application in the appropriate format before it is filed. Your U.S. attorney, who is familiar with your circumstances and with the corresponding U.S. application, will generally continue to control the foreign application for you, acting through their foreign associate.

Foreign Trademark Application Priority

If your foreign application is filed within six months of your application in the U.S./your country of origin, it will generally be entitled to the priority of your U.S. application and assigned a priority filing date. That means the application will be examined as if it were filed on the same date as the U.S. application. Most countries are members of treaties that provide for this priority claim, however not all are. The foreign associate will know whether a claim of priority is appropriate.

Foreign Trademark Application Examination

Trademark application are generally subjected to less rigorous examination in countries other than the U.S. Many countries do not have a rule against descriptive trademarks and allow very broad listings of goods and services.

Costs of Foreign Trademark Applications

Filing individual trademark applications in ever foreign country of interest can be expensive. In addition to each country’s filing fees, you pay for two levels of attorneys, your U.S. attorney and the foreign associate. Typical costs can be $1,500 per country just to get the application filed.

Any questions about protecting trademarks in foreign countries? Let me know in the comments.

On to Part 2 (International Applications Under the Madrid System)

Initial Steps

The first step towards registering your trademark is determining what the trademark consists of and gathering the information necessary for the application. Your trademark can consist of text, a design, or a combination of the two. If your mark includes a design element, you will need a high quality reproduction of the mark. You will also need to know the owner of the mark (typically the company selling the goods or services with which the trademark is used), including entity type and state of organization, if applicable, and the owner’s mailing address.

You will also need a list of all the goods and services for which the mark is used or will be used. Goods and services are divided into different categories, or “classes.” Your trademark attorney can help you to determine which classes your goods or services fall under. A trademark can have a list of goods or services spanning multiple classes, but each class beyond the first adds substantial cost throughout the life of your trademark registration.

If the mark is already in use in interstate commerce (used on goods shipped across state lines or to advertise services), it is important that this list is accurate, as a misstatement could result in your trademark being invalidated. Your trademark attorney may be able to come up with a draft list based on materials supplied by you (such as a website), which you can then go over with your attorney and modify as necessary.

You will also need to know the first date that your trademark was used in commerce anywhere and the date it was first used in interstate commerce. If you cannot remember the exact date, you should determine the earliest one you are certain of. When you fill in your application, a date that is mistakenly too early could be considered fraud, but a date that is mistakenly too late can be rectified at a later date if it becomes necessary. You will also need one “specimen” for each class of goods or services for which your trademark has already been used. A specimen is a picture of your mark as used in commerce.

To show use on goods, the specimen may be a photograph showing the mark on the goods, or packaging or shipping materials for the goods, or a tag or label. For services only, the specimen may be an advertisement (website printouts usually make good specimens). An advertisement is not an acceptable specimen to show use of a trademark on goods/products. Under certain circumstances, a catalog or “point of sale” display may also serve as a specimen for goods. Please contact your trademark lawyer if you have any question about the suitability of a specimen.

Registrability Search

Once you have determined what the mark is and what goods or services it is or will be used with, a registrability search (also referred to as a registerability search or simply a trademark search) can be performed if so desired. You can try to do this search yourself, searching the PTO database for similar marks for similar goods or services, or you can have a trademark attorney perform it. The attorney can also render an opinion on the registrability of your mark. In this process, the United States Patent and Trademark Office’s trademark register is examined to see if any existing trademark applications or registrations would prevent registration of your mark.

When I conduct a registrability search, I also perform an Internet search for any unregistered users of similar marks that could cause you problems down the road. If you want to be as sure as you can be that no one else in the U.S. is already using a similar mark, you can also include in the search the state trademark registers (rarely used), state corporate name registers, and trade publications. If you plan on using your mark internationally, you can extend your ssearch to cover foreign countries of interest. Of course, cost scales up rapidly along with the scope of the search.

I typically recommend a registrability search prior to filing an application. If conflicting marks are found, your mark can be modified to avoid them without the wasted time and expense of a full application and, potentially, a registration that will later be canceled.

Initial Application

Once you have gathered the information you need and performed a registrability search, you are ready to file your application to register your trademark. Since you have already gathered all the necessary information and made the necessary decisions regarding the mark to be registered and the goods and services the registration will cover, the application itself is a relatively trivial matter.

Essentially, the information you gathered must be entered into a form available on the website of the United States Patent and Trademark Office and submitted electronically. Nevertheless, it is easy to make a mistake if you have not done this a few times, so again it is best to leave this to your trademark attorney.

There are also a few different application forms that you can use. Using the TEAS-Plus form reduces the filing fee from $325 to $275 per class, but requires that you choose your goods and services from a pre-approved list. In addition, if you have not yet used the mark in interstate commerce with some of the goods and services you wish to register the mark for, they must be assigned an “intent-to-use” (1(b)) filing basis. You will eventually have to either use the mark with these goods or services, or remove those goods and services from the application in order for a registration to be issued.

Preparing and filing your application to register your trademark entails a government fee of $325 (or $275 with TEAS-Plus) per class of goods or services in addition to whatever your attorney charges for his or her services. Many applications fall under a single class.

Examination of Your Application

Your application will be picked up by a Trademark Examiner within about three months after your application is filed. Many times, applications are approved by the Examiner and passed to publication without the necessity for any changes. Other times, the Examiner may send out an Office Action requiring changes to your application to comply with certain formalities. The Examiner may also cite other registrations or pending applications that he or she feels prevent registration of your mark, or give other reasons that your mark is not registrable in the opinion of the Examiner.

If an Office Action is sent, it must be replied to within six months. There is no government fee on top of the amount you will be charged by your attorney for his or her services in preparing and filing the Response. If the Examiner still is not satisfied, a second Office Action may be sent. At that point you must meet all the Examiner’s requirements, or appeal to the Trademark Trial and Appeal Board, or risk abandonment of your application. In some cases, registration of your mark may be refused.

Publication and Allowance of Your Application

After your application is accepted, it will be published in the Official Gazette of the United States Patent and Trademark Office. This publication places all other trademark holders on notice that your mark is about to be registered and gives them one month to oppose your registration. If your registration is not opposed, the mark will be allowed and, in the case of marks currently in use, officially registered.

Statement of Use (Intent-to-use applications)

If your application was filed on an intent-to-use basis, a Statement of Use (See TMEP § 1109) must be filed within six months of allowance, along with a specimen showing use of the mark in interstate commerce, before registration will occur. A Statement of Use carries a government fee of $100 per class.

If the mark is not yet in use by this time, you can request an extension of time to file the Statement of Use. Up to five extensions may be requested, each of which grants you an additional six months in which to use the mark and file a Statement of Use. Thus you may delay the use of your mark on the listed goods or services for up to three years after allowance of your application. If you still need more time, you will have to file a new application, because after you have used up all your extensions the original application will go abandoned. Each extension carries a government fee of $150/class in addition to whatever your attorney charges for this service.

Declarations of Use and Incontestability

Between five and six years after your mark is registered, you must file a statement of continued use under Section 8 (See TMEP § 1604). The government fee is $100 per class. The statement can also be filed in the six-month grace period after the end of the sixth year, however filing during the grace period carries an additional $100/class fee. This statement must set forth the goods or services listed in the registration with which the mark continues to be used and must be accompanied by one specimen for each class of goods or services. Failure to file this statement within six and a half years after registration will result in the cancellation of your registration.

A declaration of incontestability (See TMEP § 1605) can also be filed once your registered trademark has been in continuous use for a period of five years after registration. If this affidavit is filed properly, the registration becomes “incontestable” and is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions.

Filing this declaration carries a government fee of $200 per class. Because the statement of use and declaration of incontestability each can first be filed five years after registration, it is common to file them together in a combined statement of use and incontestability (combined declaration under §§ 8 and 15).

Incontestability is a powerful advantage for your mark in court and grants you extra leverage in negotiations with infringers or for licensing and sales. Note that your mark also becomes stronger after being registered for five years regardless of whether you file a declaration of incontestability, in that the reasons available for someone to petition for cancellation of your mark are decreased.

Renewals

A trademark registration expires after ten years. If you wish to keep your trademark registration active, you must file an Application for Renewal of your registration under § 9 (See TMEP § 1606) before the expiration of this ten year period. The window for filing this Renewal opens one year before expiration of the mark and a Renewal may also be filed within six months after the expiration of your mark (the “grace period”) with an additional fee. Thus, you may file a Renewal any time between nine and ten years after registration, or between ten and ten and a half years after registration, with payment of the additional fee. Each Renewal extends the life of the registration for ten years, thus a new Renewal must be filed before the end of twenty years after registration, thirty years, etc., if you do not
wish for your registration to expire.

On top of your attorney’s service charge there is a government filing fee of $400 per class for filing a Renewal. An additional fee of $100/class is applied for filing during the six-month grace period.

Another declaration or affidavit of continued use under § 8 must also be filed within the same period as the Application for Renewal of registration. The government filing fee is $100 per class, with an additional $100 per class for filing during the grace period. Just like the Application for Renewal, an Affidavit of Use must be filed every ten years after registration. For this reason, the Application for Renewal and Affidavit of Use are typically filed together.

Keeping Track of the Deadlines

Generally, your trademark lawyer will keep all of the relevant dates for your trademarks in a calendar and docketing system. That means you should never have to worry about missing an important deadline and allowing your trademark to lapse. This service may be included in the cost of filing renewals, etc. If you miss a deadline and your registration expires, typically your only recourse is to file a new application and go through the examination process again. Of course, your long period of use may be helpful in overcoming certain rejections the Examiner might otherwise raise.

Notice

This article was prepared in June 2009 and the information contained herein does not include any changes to the law after that time. Please do not rely on any information contained in this article without confirming it with your attorney.

Any questions?  Anything I left out?  Please let me know in the comments.