Part one: trademark registration service
1. reaching Trademark office database, drafting researching report
2. preparing legal documents and filing applications
3. preparing ITU legal documents and filing ITU applications
4. filing delay application at trademark office if the mark does not begin to use at that regulatory period (generally 5 times in 3 years)
5. filing objections regarding trademark infringement (based on customer confusion, dilution, or other theories)
6. replying Trademark office actions
7. filing cancellation registration
8. drafting assignment documents & recording the assignment at Trademark Office
Part Two: Common questions about registering a trademark in the United States
Applicant needs to file the application at the United States Patent and Trademark Office (USPTO).
In the United States, almost anything can be a trademark if it indicates the source of your goods and services. It could be a word, slogan, design, or combination of these. It could be a sound, a scent, or a color. You can also be registered your trademark in standard character format or special form format.
The standard character format: example: the following CocaCola TM, it protects the words themselves and is not limited to a particular font style, size, or color.
The specialized character: example: the following TM, the stylized lettering is a significant part of what’s protected.
Trademark Act section 2 listed the marks cannot be registered as trademarks in the United States. Such as the marks consists of or comprises immoral, deceptive, or consists of or comprises the flag or coat of arms or other insignia of the United States or any States or municipality, etc.
No legal requirement, but we strongly recommended because it will help you get the main information about the risks of the application.
No, United States does not allow defensive registration. In other words, you can only register the marks for the goods or services in the class that you will use them.
Yes, it does. At the time of filing the application, Trademark Act requirements applicant filing intent-to-use application with statement of bona fide intention to use the mark in commerce.
It depends. It could be 9 months or longer because too many applications filed in 2021 and the pandemic, which caused great application dependency.
Yes, it could be. If the USPTO examination attorney finds the application has issues, it will issue office action to the applicant. Applicant must reply in a certain period time.
30 days. During the published period, third party may file petition to object the application.
Each registration shall remain in force for 10 years except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the USPTO affidavits that meet the requirements:
a)Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under the Trademark Act or the date of the publication under the section 12(c);
b)Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
c)The affidavit shall
oset state the mark is in use in commerce;
oset forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce
obe accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
obe accompanied by the fee prescribed by the Director; or
oset forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;
oinclude a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
obe accompanied by the fee prescribed by the Director.
You can file the application at TTAB to petition to cancel a registration.