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Trademark Basics

The USPTO is the United States Patent and Trademark Office (“USPTO”). It is the federal agency that is responsible for granting patents and registering trademarks. The USPTO reviews all trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. The USPTO does not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce the rights of the mark based upon ownership of a federal registration.

Generally speaking, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods/services of one party from those of others. A patent is a limited duration property right relating to an invention, granted by the USPTO in exchange for public disclosure of the invention. A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished

A service mark is a type of trademark, but it specifically identifies an owner who provides services, rather than goods. Trademarks – used by their owners to identify goods, that is, physical commodities, which may be natural, manufactured, or produced, and which are sold or otherwise transported or distributed via interstate commerce. Service marks – used by their owners to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration which has been granted by the USPTO.

No. The USPTO will not approve your mark for registration if it is not used in interstate commerce.

“Interstate commerce” means that your mark is used for goods or services provided in more than one state or affects commerce in more than one state. For example, a landscaping business which provides services only in one local community may not qualify for federal trademark protection because the services being provided do not affect commerce in more than one state. However, if a landscaping business provided its services in more than one state, it may satisfy the “interstate commerce” requirement for federal trademark protection.

Yes. The USPTO will not approve your mark for registration if it is not used in interstate commerce.

A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.

Yes. While a name alone may not be registered, if a name or likeness is being used to establish the function of the mark, it may be eligible for registration. An application which uses a name or likeness of a living individual must include the signed consent of the living individual.

The USPTO will require that you submit as evidence (in either a JPG or PDF format) a written consent from the named/shown individual, personally signed by the individual, and using the following language: “I consent to the use and registration by of my name as a trademark and/or service mark with the USPTO.” “I consent to the use and registration by of the signature of my name as a trademark and/or service mark with the USPTO.” “I consent to the use and registration by of my portrait or likeness as a trademark and/or service mark with the USPTO.”

No. Marks that merely identify a character in a creative work, whether used in a series or in a single work, cannot be registered.

If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol and you may continue to use these symbols even if the USPTO refuses to register your mark. These symbols put people on notice that you claim rights in the mark, although common law does not give you all the rights and benefits of federal registration. You may only use the federal registration symbol “®” after the USPTO actually registers a mark, not while an application is pending. And it may only be used in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you do not maintain the registration or it expires). Although there are no specific requirements on where the symbol should be placed relative to the mark, most businesses use the symbol in the upper right corner of the mark. (Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.)

Things To Know Before Filing An Application

The smartest thing you can do before submitting a trademark application is to know exactly what you want to register, and complete a comprehensive search to determine whether it may be confused with a similar trademark. Before starting the application process, it is important to have clearly in mind (1) the mark you want to register; (2) the goods and/or services in connection with which you wish to register the mark; and (3) whether you will be filing the application based on actual existing use of the mark or a bona fide intention to use the mark in the future (this is known as the filing “basis”). This will make your search more useful and may simplify the application process.

No. The USPTO may determine the mark does not qualify for federal registration and may issue a refusal.

A basic trademark search is a search only of the USPTO database. It includes pending, abandoned, rejected, cancelled and registered trademarks.

A comprehensive trademark search is a search of (1) the USPTO database, (2) state and federal databases, and (3) a common law search. Once the search is completed, Registered Artists will e-mail you a PDF document containing your search results.

“Live” is a term used by the USPTO to describe trademarks which have been approved for registration and trademarks currently pending before the USPTO.

“Dead” is a term used by the USPTO to describe a trademark which was previously registered, but is no longer active either because it was cancelled, terminated or abandoned.

A common law search extends beyond state and federal databases, and searches the internet and other public records to determine if any other person or buisness is utilizing a mark which may be the same, or similar, to your mark.

Maybe. The USPTO considers an abandoned mark to be “dead.” While the mark may no longer be entitled to the same protection as a registered mark, it is possible that the owner of the abandoned mark is still using the mark in commerce. In such an event, the abandoned mark may still be protected by the common law.

The USPTO will grant a filing date on a trademark application only if it contains all of the following: 1. The name of the applicant; 2. A name and address for correspondence; 3. A clear drawing of the mark (to trademark a word or phrase, the drawing will be reflected in a standard font); 4. A listing of the goods or services; and 5. The USPTO filing fee for at least one class of good or services. If the application does not satisfy all of these requirements, it will not be given a filing date.

The “applicant” of a trademark may be an individual, or an entity, such as a corporation, partnership, joint venture, union, association or other organizations capable of suing or being sued in a court of law.

Yes.

No. While an application can be amended to correct an inadvertent error, an application cannot be amended to substitute another individual or entity as the applicant. If the application was filed in the name of a party who has no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration will be refused.

No. Except for your payment information, all of the data on the application submitted to the USPTO, including your name, street address, e-mail address and phone number, will become a part of the public record, and can be viewed on the USPTO’s website, as well as other websites which utilize data obtained from the USPTO website.

Yes. The USPTO will only accept your image in a JPG format, which cannot exceed 5 megabytes.

No. Although the USPTO’s registration process is considered a legal proceeding, you are not required to hire an attorney. However, many applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications will be approved by the USPTO for registration.

A Detailed Walk-Through of the Application Process

Step 1 – Filing of the Application: The trademark application starts with the filing of an application with the USPTO. The filing date is the date that the application is received by the USPTO.
Step 2 – Review by USPTO and Addressing any Office Action Letters: On average, it takes about three months between the date of filing and the date when a trademark application is reviewed by at examining attorney at the USPTO. It may take the examining attorney at the USPTO up to a month to review the application to determine whether federal law permits registration. Once examined, the examining attorney at the USPTO will either approve the mark for publication (which provides the public with a chance to oppose the application), or issue an Office Action letter to the applicant identifying any reasons why the mark may be refused for registration. Step 2(a): If the examining attorney at the USPTO issues an Office Action letter, the applicant typically has six months to respond. Registered Artists does not provide legal services or advice, and cannot communicate with the USPTO in response to an Office Action letter. An applicant does not need to be represented by an attorney to respond to an Office Action item, but most applicants prefer to be represented by legal counsel as the issuance of an Office Action letter typically means the examining attorney at the USPTO has identified a problem with the mark which may result in denial of the application. Step 2(b): If an Office Action letter is issued, and the applicant timely responds and has adequately addressed each of the reasons provided by the examining attorney at the USPTO for refusal, the mark may be approved for publication, as explained in Step 3 below. If the applicant does not timely respond, the application will be deemed “abandoned,” the application process will end, and the mark will not be registered. If the applicant timely responds to an Office Action letter, but the response fails to overcome the reasons for refusal identified by the examination attorney at the USPTO, then a final Office Action letter will be issued. An applicant may respond to a final Office Action letter by either (1) overcoming the reason(s) for refusal identified by the examining attorney, or (2) appealing to the Trademark Trial and Appeal Board within 6 months. Step 3 – Publication of Mark: If the examining attorney determines that federal law permits the mark to be registered, it will be approved for publication in the USPTO’s Official Gazette (“OG”). The OG, the USPTO’s weekly online publication, provides notice to the public that the USPTO plans to issue a registration. Publication in the OG initiates a 30-day period during which any party who believes it would be harmed by the registration may file an objection (opposition) with the Trademark Trial and Appeal Board. If an objection (opposition) is filed, no further action is taken until the opposition is resolved. Step 4 – Mark Registered: Within three months after the mark is published in the OG, and if no opposition is filed, then the USPTO will issue a registration for the mark. If an opposition was filed but was unsuccessful, a registration for the mark will be issued when the Trademark Trial and Appeal Board dismisses the opposition.

Generally speaking, each trademark application consists of: 1. Owner information. This includes the name and contact information for the owner of the mark. 2. Mark information. This consists of identifying the type of mark (i.e., standard characters, special form, or sound mark), and any additional statements that should be considered by the USPTO (for example, a disclaimer, a translation, a claim of prior registration, the consent of an individual, or a concurrent use of claim). A specimen must be submitted depicting the mark. 3. Good and services information. Each application must identify the goods and/or services to which the mark is intended to identify. This includes identification of each type of class into which these good and services apply. 4. Assigned filing basis. There are four different types of filing basis: Actually using the mark in commerce now (1a) (must include specimen demonstrating use in commerce) Not using the mark yet, intending to use (1b) Foreign application exists for same goods/services (44d) Foreign registration exists for same good/services (44e) 5. Verification and Signature

There is no “typical” amount of time for a trademark to get registered. However, even if the USPTO does not issue any Office Action letter, it is not uncommon for it to take 12 months from the date an application is submitted to the date the trademark is officially registered by the USPTO. If an Office Action letter is issued, the registration process could be extended an additional 2-12 months. Remember, not all trademark applications are approved by the USPTO, so there is no guarantee of registration once an application is filed.

Yes. Every application must include a statement that is verified by the applicant or by somebody who is authorized to verify facts on behalf of the applicant. Federal law does not allow Registered Artists to act as an “authorized” signer on behalf of an applicant. Applications must be signed by (1) a person with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

A specimen is a sample of how you actually use the mark in commerce in connection with your goods or with your services. A specimen shows the mark as your purchasers/clients encounter it in the marketplace (e.g., on your labels or on your website).

The “drawing” is a clear image of the mark that the applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.”

When you apply for a trademark, the USPTO will want to know whether you are already using the mark in commerce (i.e., “use in commerce”) or if you intend to use the mark in commerce in the future (i.e., “intent to use”). These two choices are referred to as the filing “basis.” It is very important to understand that even if you apply for a trademark on an “intent to use” basis, at some point prior to registration you will need to provide evidence to the USPTO to demonstrate that you have used the mark in commerce. In other words, you can start the application process before you have started using your mark in commerce, but you will not receive final approval until you have demonstrated that it is actually being used in commerce. An “intent to use” basis requires filing an additional form and fee prior to registration. “Use” is established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting a specimen (example) showing how you use the mark in commerce.

The basic difference between these two filing bases is whether you have actually used the mark in commerce. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.

Yes. The identification of “good and services” is a very important aspect of a trademark application. The application must include a list of particular goods or services the applicant uses or intends to use in connection with the mark. For example, a company that produces television shows, may describe its service as “television show production.”

What To Expect Once Your Application Is Submitted

Throughout the entire process, Registered Artists monitors the progress of your application. If the examining attorney at the USPTO takes any action (i.e., an “Office Action”), you will receive notification directly from the USPTO, and you will also receive a notification from Registered Artists. If you have chosen to have an attorney represent you through the USPTO application process, the USPTO will communicate only with your attorney.

No. Registered Artists only assists with the filing of documents with the USPTO. Registered Artists may not act as your legal representative, and may not provide you with legal advice with regards to your application. Once your application is submitted, all communications will be sent directly from the USPTO to you, unless you are represented by an attorney.

Yes. Once your application has been submitted, it may be amended for limited purposes, such as: Deletion of an existing class or modification of the listing of goods/services within an existing class. Insertion of an additional statement, for example, a disclaimer, a translation into English, the consent to register an individual’s name. Submission of a better quality image or submission of a drawing that complies with U.S. drawing requirements. You may not amend the mark, even in a non-material way. Correction of applicant or entity information, e.g., to provide applicant’s country of incorporation or organization. You may not change the applicant/holder or address thereof. Payment of additional fee Submission of a signed declaration, if you believe the original declaration was not properly signed.

If an examining attorney at the USPTO identifies an issue with your application, an “Office Action” letter will be sent to the applicant, or the applicant’s attorney. This type of action may include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office Action within 6 months from the date the Office Action letter is issued or the USPTO will abandon the application. If that happens, the application fee will not be refunded, and your mark will not register. There are two types of Office Actions: non-final and final actions. A non-final Office Action raises an issue for the first time. A final Office Action issues when the applicant’s response to the prior Office Action fails to address or overcome all issues. An applicant’s response to a final Office Action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.

Yes. At any point during the registration process you may retain an attorney to represent you. However, once an attorney is retained, the USPTO will communicate only with your attorney.

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the “Official Gazette,” a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the “Official Gazette,” any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. It can take three to four months from the time the notice of publication is sent before the applicant will receive official notice of the next status of the application. During this time, the applicant should continue to monitor the status of the application.

Once a mark has been published in the USPTO’s Official Gazette, it triggers a thirty-day period during which any person may file an opposition on the basis that he/she/it would be damaged if the mark were to be approved for registration. During this time period, the opposing person may also file a request for an extension of time to file the opposition. The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition.

No. The fees charged by the USPTO and Registered Artists are processing fees. Not all applications result in registration. Your fee will not be refunded by the USPTO or by Registered Artists, even if ultimately no registration issues.

The USPTO may refuse to register your mark for a variety of reasons. Common reasons for refusal include, (1) likelihood of confusion, (2) that the mark is merely descriptive, (3) the mark is geographically descriptive, (4) deceptive matter, or (5) immoral or scandalous matter.

In evaluating an application, the examining attorney at the USPTO conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, it is not required that the marks and the goods/services be exactly the same. Instead, it is sufficient if the marks are similar and the goods and or services related such that consumers could mistakenly believe they come from the same source. There may be a “likelihood of confusion” if the marks convey a similar general meaning and produce the same mental reaction. Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. When a conflict exists between the applicant’s mark and a registered mark, the examining attorney at the USPTO will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered. Therefore, it is critical that you conduct a search for conflicting marks before you file, as the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark.

A mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, the mark “CREAMY” would be merely descriptive for yogurt and the mark “WORLD’S BEST BAGELS” would be merely descriptive for bagels.

A mark that is primarily geographically descriptive, and likewise a primarily geographically deceptively mis-descriptive, will be refused registration. The examining attorney at the USPTO will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, (i.e., purchasers would make a goods/place or services/place association); and (3) the mark identifies the geographic origin of the goods or services. For example, the mark “THE NASHVILLE NETWORK” would be primarily geographically descriptive of television program production and distribution services that originate in Nashville, Tennessee. A mark will be refused as primarily geographically deceptively mis-descriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; (3) the goods or services do not originate in the place identified in the mark; and (4) the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services. For example, the mark “REAL RUSSIAN” would be primarily geographically deceptively mis-descriptive for vodka that does not come from Russia.

Many registered marks include a disclaimer. A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified word(s) or element(s) of the mark which are merely descriptive, generic, or otherwise non-distinctive. The purpose of a disclaimer is to permit the registration of a mark that is registerable as a whole but contains matter that would not be registerable standing alone.

If the USPTO approves an application submitted on an “Intent to Use” basis, it will provide the applicant with a “Notice of Allowance.” The applicant then has six (6) months from the mailing date of the Notice of Allowance to either file a “Statement of Use” or file an extension request. The purpose of the “Statement of Use” is provide evidence to the USPTO that the mark is being used in commerce in conjunction with all of the goods/services listed in the Notice of Allowance.

When a mark does not meet the requirement for registration of the Principle Register because it is “merely descriptive” of the goods or services, an option is to have the mark placed on the Supplemental Register. For example, if a business published a magazine called “Home Electronics Magazine,” the name of the magazine may be denied registration on the Principal Register because it is “merely descriptive.” The Supplemental Register is only for marks that are descriptive in nature. Although registration of the Principle Register provides the most protection, registration on the Supplemental Register will still result in the mark appearing in trademark searches, and allows the owner to use the ® symbol. Further, registration on the Supplemental Register may be used to prove exclusive use of a mark for a five year period, one of the aspects of proving “acquired distinctiveness” for registration on the Principal Register.

The USPTO utilizes a Principal Register and a Supplemental Register. Having a mark registered on the Principle Register provides the owner with the most protection, which includes:

• Constructive notice to the public of the owner’s claim of ownership of the mark;

• A legal presumption of ownership of the mark and exclusive use to use the mark nationwide or in connection with the good/services in the registration which can become “incontestable.” Subject to certain statutory defenses;

• A date of constructive use of the mark as of the filing date of the application;

• Listing in the USPTO’s online databases;

• The right to use the federal registration symbol “®”;

• The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods;

• The ability to bring an action concerning the mark in federal court; and

• The use of the U.S. registration as a basis to obtain registration in foreign countries.

An amendment to allege use under Section 1(c) is used when an application has been submitted to USPTO on an “intent to use” basis. If you begin to use the mark in commerce after the application is submitted to the USPTO, but before the mark has been approved for publication, then you should file an “amendment to allege use.”

These are essentially the same filing. The only difference is the timing. An “Allegation of Use,” also known as an “Amendment to Allege Use,” may be filed after the original mark application is filed, but before the mark has been approved for publication. After the mark has been approved for publication, and the USPTO has issued a Notice of Allowance, a “Statement of Use” is filed.

What Happens After Your Trademark Is Registered

Yes. After a registration issues, to keep the registration “alive” or valid, the registration owner must file specific documents (such as a Section 8 and 9 Declarations) and pay fees at regular intervals. The deadlines for filing these documents are calculated from the registration date shown on the registration certificate. Failure to file these documents will result in the cancellation and/or expiration of your registration.

Yes. Subject to the filing of Section 8 Declarations and Section 9 Applications for Renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.

Upon approving a mark for registration, the USPTO issues a physical certificate of registration, which is mailed to the mark owner. The owner of a registered mark has the legal right to utilize the (R) symbol next to the registered mark. If your certificate of registration is lost or misplaced, Registered Artists can assist you with obtaining a new certificate of registration from the USPTO.

Between the 5th and 6th year after the registration date the owner must file a Section 8 Declaration. There are two types of Section 8 declarations: One is a “Declaration of Continued Use.” This is the mark owner’s sworn statement that the mark is actively being used use in commerce. The other is a “Declaration of Excusable Nonuse.” This is the mark owner’s sworn statement that the mark is not in use in commerce due to special circumstances that excuse such nonuse, and is not due to any intention to abandon the mark.

Yes. In addition to the fee charged by Registered Artists, the USPTO currently charges a $100 fee per class of goods/services. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of surcharge to the USPTO of $100 (i.e., $200 total fee and surcharge owed to USPTO if filed within the 6-month grace period).

Yes. The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely Section 8 Declaration is not filed by the current owner of the registration during the prescribed time periods. The USPTO has no authority to waive or extend the deadline for filing a proper Section 8 Declaration. Registrations cancelled due to the failure to file a Section 8 Declaration cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

The owner of the registration must file a Section 8 and 9 Declarations during the following time periods:

• First Filing Deadline (Section 8): File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court

• Subsequent Filing Deadline (Section 9): File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter.

Yes. The owner must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. The USPTO has no authority to waive or extend the deadline for filing a proper Section 9 Renewal Application. Registrations cancelled due to the failure to file a Section 9 Renewal Application cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

A Section 15 Declaration is a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified (i.e., a Declaration of Incontestability). Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under Section 15. A Section 15 Declaration is optional. It may not be filed until the mark has been in continuous use in commerce for at least five (5) consecutive years subsequent to the date of registration. The Section 15 Declaration must be executed and filed within one (1) year following a five (5) year period of continuous use of the mark in commerce.

A “Declaration of Incontestability” is also known as a “Section 15 Declaration.” A Section 15 Declaration may only be filed for a mark on the Principal Register that has been in continuous use in commerce for a period of 5 years after the date of the registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark. “Incontestability” enhances the legal presumptions the registration receives. This declaration requires a fee.

No. The filing of a Section 15 Declaration is optional. An owner may choose to claim the benefits of incontestability by filing a Section 15 Declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.

Yes. In addition to the processing fee charged by Registered Artists, the USPTO currently charges a $200 fee per class of goods/services, and the filing fee for a Sections 8 & 15 Combined Declaration is $300 per class. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of surcharge to the USPTO of $100 (i.e., $200 total fee and surcharge owed to USPTO if filed within the 6-month grace period).

Holders (owners) of registered extensions of protection to the U.S. (also called Section 66(a) registrations, registrations resulting from 79' series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO has no authority to waive or extend the deadline for filing a proper Section 71 Declaration. Registrations cancelled due to the failure to file a Section 71 Declaration cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.

The owner of the registration must file a Section 71 Declaration during the following time periods:

• First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) on or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States, or in the six-month grace period immediately following, with payment of the grace period surcharge.

• Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) within the year preceding the end of each ten-year period after the date of registration in the U.S., or in the six-month grace period immediately following, with payment of the grace period surcharge.

With basic trademark monitoring, Registered Artists will monitor the USPTO database and notify you of any potentially infringing marks that may be filed with the USPTO for registration.

With premium trademark monitoring, Registered Artists will monitor not only the USPTO database, but also state and federal databases, as well a common law sources for potentially infringing marks.

Making Chages To A Registered Mark

Yes. A trademark owner may file a Section 7 request to amend or correct the registration at any time. The amendment may not materially alter the mark or broaden the goods and/or services. A fee is required, except for corrections due to USPTO error.

Yes. You must submit a “Request to Divide Registration” form to divide a registration based on an application under Section 1 or Section 44 of the Trademark Act if ownership of the registration has changed with respect to some, but not all, of the goods and/or services. For the request to divide to be processed, you must also record an assignment with the Assignment Recordation Branch and pay the $100 divisional fee for each new registration created by the division. If the request to divide is incomplete, the Post-Registration examiner will issue an Office Action letter requesting the omitted information. If no response is received within six (6) months, the request to divide will be dismissed.

Yes. An owner may transfer or assign a registered mark to a new owner. The new owner is encouraged to record the assignment with the USPTO. If the owner would like a new registration certificate, the owner must submit a separate request showing that the assignment has been recorded with the USPTO.

Yes. The owner of the mark may file a Section 7(e) voluntary surrender of registration, which results in the owner voluntarily surrendering the registration, in its entirety or for a portion of the goods and/or services.

No. The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no enforcement powers concerning the use of trademarks in the marketplace.