A Guide to U.S. Trademarks for Non-U.S. Companies

Transcription

1 A Guide to U.S. Trademarks for Non-U.S. Companies Nicholas D. Wells Wells IP Law One Stamford Plaza 263 Tresser Boulevard, 9th Floor Stamford, Connecticut United States of America

2 Table of Contents Table of Contents... 2 Introduction... 4 What Can I Register as a Trademark?... 5 Distinctive Marks; Generic and Descriptive Marks... 5 Registering Non-English Words... 6 Classes of Goods and Services... 6 Registering Words and Designs... 7 Registering Colors... 7 Registering Sounds...7 Registering Slogans... 7 Registering Product Designs... 8 Choosing Which Parts to Register...8 Why Should I Register My Trademark? Rights Throughout the U.S Working with Your U.S. Distributors Help Securing Domain Names Enforcement at the U.S. Border Consistent Use of Trademark Symbols Enforcement in U.S. Courts How Does the Registration Process Work? An Overview of the Process Step 1 Application Filing Basis Step 2 Examination Step 3 Office Actions May Be Issued...17 Step 4 Publication for Opposition Step 5 Allowance Step 6 A Statement of Use May Be Required Step 7 Registration Step 8 Evidence of Use Before End of Sixth Year Wells IP Law 2

3 Step 9 Section 15 (Possible After Five Years of Use) Step 10 Renewal Do I Need A Trademark Attorney? When Must I Use a U.S. Trademark Attorney? When Should I Choose to Use a U.S. Trademark Attorney? Index Wells IP Law 3

4 Introduction Many small and medium-sized businesses outside the United States want to register a trademark in the United States so they can more effectively sell goods and services in the U.S. This guide is for those businesses and the non-u.s. law firms that help them. I m a principal of Wells IP Law, LLC, based in the New York City metropolitan area. You can learn more about my legal practice at or contact me at nwells@wellsiplaw.com. Why would a U.S. trademark attorney prepare such a guide? I believe that a businessperson who is informed about legal issues usually makes a happier client when an attorney is needed; the businessperson better understands how to communicate with the attorney and better recognizes the value that the attorney provides. This also makes the attorney s work more interesting and more professionally satisfying. Of course, this Guide is not legal advice. It also is not a legal treatise the style is informal. I consider it to be accurate, but it may contain errors and you must use the contents of this Guide only at your own risk. Check your facts. Contact an attorney if you are uncertain how to proceed. You may use this Guide within your business or non-u.s. law firm, but you may not copy or distribute it outside your business or law firm, and you may not post any part of this Guide on a website. Information that is specific to trademark applications filed under the Madrid Protocol (Requests for Extension of Protection) are highlighted in grey throughout this Guide. If you have suggestions for additional information or improvements, please contact me at the address above. September 2010 Edition 2010 Nicholas D. Wells Your right to use this Guide is limited as described above Wells IP Law 4

5 What Can I Register as a Trademark? A trademark (a mark ) is a word or symbol that potential customers associate with the source of goods or services. Distinctive Marks; Generic and Descriptive Marks Some countries do not allow you to register a trademark unless the mark is distinctive. For example, an application to register a single letter or a short combination of letters and numbers may be refused registration in some countries because it is not distinctive. Trademarks in the U.S. do not use this terminology. Instead, most trademarks in the U.S. are assumed to be distinctive unless they are generic or descriptive. A generic mark is a mark that is a general term for the goods or services for which you seek registration. For example, you cannot register FRUIT as a trademark for apples. A descriptive mark is a mark that describes a feature, target customer, geographic origin, or other aspect of the goods or services for which you seek registration. For example, you cannot register RED as a trademark for apples because the mark describes apples other companies need to be able to use that term to describe their products. Sometimes a trademark examiner will claim that a mark is descriptive or generic. You can explain why you don t think the trademark is descriptive. This usually means that you must refer to past legal cases. A generic trademark cannot be registered. A trademark that is descriptive can be registered only if it has acquired distinctiveness or has secondary meaning in the minds of customers. That is, customers who see the mark must think of the mark as identifying the source of goods or services, rather than only as describing those goods or services. If only a part of your mark is descriptive, then you may be required to disclaim that part of the mark. This means that others would be free to use that part of your mark in their 2010 Wells IP Law 5

6 marks. For example, if you wanted to register WATER OF THE VALLEY for bottled water, you would be required to disclaim the term WATER within your mark. When a part of a trademark is disclaimed, the mark itself is not changed. The disclaimer is only a statement within the application. It means that you are admitting that part of the mark is descriptive. Registering Non-English Words A non-english word that appears in your trademark will usually be evaluated (that is, compared to other marks and to the goods and services themselves), based on an English translation of that word. For example, suppose you wanted to register the mark AQUA OF THE VALLEY for bottled water. The word AQUA is Italian for water. You would be required to disclaim the word AQUA (meaning water ) as descriptive of your goods (water), even though the word appears in Italian within your trademark. Classes of Goods and Services A trademark must be registered for specific goods and services. You cannot register a trademark in the abstract. For example, you cannot register ORANGE by filing a trademark application and own that word for all purposes. Instead, you must specify what goods or services you intend to sell using the ORANGE mark. To make it easier to keep track of all the different goods and services in the world, many countries (including the U.S.) use a system to group things together into 45 classes. These international trademark classes were defined in an agreement called the Nice Agreement (named for Nice, France). The classes are important for several reasons that you will read about in later sections. Having more classes in your application means you must pay more government fees Wells IP Law 6

7 Registering Words and Designs Most trademarks are made up of words and graphical designs. The words may be in a plain letters this gives the broadest trademark protection. Or the words may be in a specific typeface this is called a stylized mark. A design alone can be a trademark; a design with words can also be a trademark. If you use a large or complex design on your products, you must decide which parts should be included in the trademark registration. Many marks that include words or designs also include a specific color. It is usually better not to specify the colors as part of a trademark application, because if color is not specified, then the trademark registration will be broader in scope. Registering Colors Colors alone can be registered in the U.S. For example, you could register the color light-yellow for computer accessories. But there are many obstacles to obtaining registration for a color alone. You must prove that the color has acquired distinctiveness for your goods or services. Registering Sounds Sounds can be registered in the U.S. They are typically represented in the application using standard musical notation. (See, for example, U.S. Reg. No. 3,659,390 owned by Intel.) Registering Slogans Slogans, mottos, tag lines, and similar phrases can be registered as trademarks in the U.S. These are sometimes more difficult to register because they may be used only in advertising instead of on the product itself. If you have a marketing slogan that will only be used for a short time, it may not be worth the expense of seeking a trademark registration. But you still may want to perform a comprehensive trademark availability search to make certain that someone else is not already using a similar slogan Wells IP Law 7

8 Registering Product Designs Many countries let you register an industrial design or a product get-up, design, or configuration. It is much more difficult (and unusual) in the U.S. to register a product design or configuration. Typically, you must prove that the design, shape, or configuration of the product is perceived by customers as indicating the source of the product. A U.S. design patent is sometimes a workable alternative. Choosing Which Parts to Register Few businesses invest enough in a particular color, sound, smell, or other unusual mark to justify seeking trademark registration. Instead, most businesses use words and designs. With this in mind, it is often wise to register your trademark in several ways. For example, suppose you sell bottled water under the brand AQUA OF THE VALLEY. You use an attractive logo on each bottle. The logo shows a waterfall. Below the waterfall, your brand name is shown in a special typeface. Several trademark applications could be filed based on this example. These are listed below, in the order that they would normally be done, with the most important being listed first. 1. AQUA OF THE VALLEY as a plain word mark without any special typeface. 2. AQUA OF THE VALLEY using the special typeface used on the bottle. 3. The waterfall design together with the words AQUA OF THE VALLEY. 4. The waterfall design alone. It is true that filing more trademark applications costs more money. But having more trademark registrations also means more opportunities to stop someone else from using any part of the elements of your trademark. It also means that if you change one part of your overall look, other parts may still be protected by existing trademark registrations Wells IP Law 8

9 In the U.S., we use one word: trademark. In the U.K., it is written as two words: trade mark. A service mark is used for services, like providing educational courses or consulting; a trademark is traditionally used for goods, like olive oil or locomotives or books. But the term trademark can also be used more generally to refer to marks used on goods and to service marks. This book uses the word trademark to refer to both types of marks unless the distinction is important Wells IP Law 9

10 Why Should I Register My Trademark? You can sell products or offer services in the United States without having a registered trademark. But there are several reasons why registering your trademark is a good idea. Rights Throughout the U.S. In most countries, you secure rights in a trademark by filing an application to register that trademark. In the U.S., you have limited rights in a trademark just by using it. If someone uses a mark that is similar to yours before you start using your mark, then they could have rights that interfere with your plans in the U.S. By obtaining a registration of your trademark, you can have more confidence that you have rights to use your mark throughout the entire United States, without worrying that your trademark rights will be limited because of someone else s activities (because of that person s common law rights in a trademark.). It is also wise to research whether someone else is already using a mark similar to yours by doing a comprehensive trademark availability search before applying to register your trademark. Working with Your U.S. Distributors If you will engage resellers or distributors to sell your products or services in the U.S., having a trademark registration tells those partners that you are serious about your presence in the U.S. It also lets you control your own brand. Many times, a reseller who sells products or services for an international company will register the trademark of the company for whom they sell goods. They may do this either in a good faith effort to protect the brand that they are selling for you, or they may want to pressure you to continue working with them. Either way, if your reseller owns a registration for your trademark, you probably cannot force them to transfer it to you without a costly lawsuit. The better path is to register your 2010 Wells IP Law 10

11 trademark yourself before you begin working with resellers or distributors in the U.S. Help Securing Domain Names Disputes about the ownership of internet domain names are common. For example, if you own the trademark LEATHERBACK and the domain name leatherback.co.uk, someone else may have registered the domain name leatherback.com before you. Many of these domain name disputes, including all disputes for.com domain names, can be resolved using the Uniform Dispute Resolution Procedure (UDRP). In some cases, a lawsuit in a U.S. federal court is also used to seek a transfer of a domain name that was acquired by someone else in bad faith. If you have registered a trademark that appears within a disputed domain name, the trademark registration provides evidence of your rights to the mark. Historically, the arbitrators who handle UDRP cases have looked very favorably on the owners of registered trademarks. Enforcement at the U.S. Border Owning a registered U.S. trademark entitles you to register your mark with the U.S. Customs and Border Protection service. This is an easy process once you have a trademark registration. The Customs officers can then block goods from entering the U.S. if they bear your registered trademark but are not authorized by you. Consistent Use of Trademark Symbols If you have registered your trademark in other countries, your brochures, products, website, and other materials may include the circle-r symbol to indicate the registered status of the trademark. You cannot use the symbol in the U.S. unless your trademark is also registered in the U.S. The symbol can be used without having a registered trademark. By registering your trademark, you can use materials that have a symbol, without the need to change materials to use the symbol Wells IP Law 11

12 Enforcement in U.S. Courts No one wants to deal with a lawsuit, but if someone is using your trademark without your permission, a trademark registration gives you several advantages in court. For example, instead of your being required to prove that your trademark is valid, the court will assume that your mark is valid; the other side would have the burden of trying to prove that your mark isn t valid. Also, U.S. law provides additional remedies for infringement of a registered trademark; in some cases of willful infringement you can receive monetary compensation or even repayment of attorneys fees Wells IP Law 12

13 How Does the Registration Process Work? An Overview of the Process U.S. trademark registrations are issued by the United States Patent and Trademark Office (the U.S.P.T.O. ). The process to obtain a trademark registration in the United States looks like this: 1. Application: You file an application with the U.S.P.T.O. You can file on paper or electronically. You have the option of filing an application that is based on an existing application or registration in another country. 2. Examination: Your application is reviewed by a trademark examiner (an attorney that works for the U.S.P.T.O.). 3. Office Actions: The trademark examiner may issue letters, called Office Actions, that refuse all or part of your application. You must respond to the letter if you want to argue that your application should proceed. 4. Publication for Opposition: If the examination phase is successful and you can overcome any objections raised in Office Actions, then your application is published for opposition. 5. Allowance: If the publication for opposition phase is successful (no one opposes registration of your trademark), then your application is allowed. 6. Statement of Use: In many cases, you must file evidence that you are actually using your trademark in the U.S. before it can be registered. 7. Registration: A formal paper registration certificate is issued. 8. Evidence of Use: In every case, between the fifth and sixth year after your U.S. registration issues, you must file evidence that you are actually using the trademark in the U.S Wells IP Law 13

14 9. Section 15: After you have been using a registered mark for five years, you can file papers to have the mark declared incontestable. 10. Renewal: Every ten years after the date of registration (or the date of the International Registration, if you are using the Madrid Protocol), you must renew your registration. You must also file evidence that you are continuing use of the trademark in the U.S. If you file a trademark application but a problem arises so that the trademark does not become registered, we say that the application goes abandoned. An abandoned application does not provide you with any legal rights. Step 1 Application You can file a trademark application by mailing papers to the U.S. Patent and Trademark Office, or by using the electronic filing system via the Internet. If you file a paper application, no special form is needed. Just include all of the required information and fees. The U.S.P.T.O. website at includes instructions on filing trademark applications. The electronic filing system is called the Trademark Electronic Application System or TEAS. The fees to file a trademark application using TEAS are lower than filing a paper application. When you file electronically using TEAS, you can pay the required government fees using a credit card, or you can set up an account with the U.S.P.T.O. Fees can change. For the latest fees, visit and search for trademark fees. If the goods and services that you list in your application match exactly the goods and services listed in the Acceptable Identification of Goods and Services Manual, and you are willing to communicate electronically with the U.S.P.T.O. (that is, receive s about Office Actions), then you can qualify for TEAS Plus. But this is often not possible. The fee to file a trademark application electronically using TEAS Plus is currently US$ 275 for each class of goods and services in your application Wells IP Law 14

15 The fee to file a trademark application electronically using TEAS is currently US$ 325 for each class of goods and services in your application. The fee to file a trademark application on paper is currently US$ 375 for each class of goods and services in your application. To use the Acceptable Identification of Goods and Services Manual, visit On the Trademarks page, select Manuals, Guides, Official Gazette on the left-side menu. You will see this manual listed as the second item on the page. If you file through the Madrid Protocol, you must use the trademark office in your own country to submit the application. The formal name of the application is a Request for Extension of Protection an REP. The trademark office in your country will submit forms to the World Intellectual Property Organization (WIPO) in Geneva, and WIPO will forward the application to the U.S.P.T.O. The fees will differ from those listed above if you use the Madrid Protocol. You can find a calculator to determine the fees at Look on the left-side menu under Trademarks, then Madrid System, then Fees. Filing Basis The U.S. Trademark Act is commonly called the Lanham Act. Section numbers in this Guide refer to section numbering in the Lanham Act. The U.S. Trademark Act provides several legal bases under which you can claim trademark rights in the U.S. When you file a trademark application, you specify which of these legal bases which part of the Trademark Act you are claiming rights under. This is called the filing basis of your application. A single trademark application can include more than one filing basis, depending on the circumstances. The following filing bases are possible: Section 1(a): An application for a trademark that is already being used in commerce in the United States. Section 1(b): An application for a trademark application where the applicant has an intent to use the mark in commerce in the United States. (This is called an ITU application.) Many times an application is filed under section 1(b) rather than 1(a) even when the mark is already being used, because filing under 2010 Wells IP Law 15

16 section 1(b) gives more flexibility later in the application process. But this also costs a little more in government fees. Section 44(d): The applicant has a trademark application in another country that was filed within six months of the date of the U.S. application, and the applicant wants the priority date of the U.S. application to be back-dated to the date of the foreign application. Section 44(e): The applicant owns a trademark registration in another country. Section 66(a): The applicant is filing the application through the World Intellectual Property Organization (WIPO), via the Madrid Protocol. Within a trademark application, you might use a combination of filing basis. For example, 1(a) for some goods and 1(b) for other goods within the same application. Or an application might use 1(b) for an intent to use the mark on certain goods in the U.S., but also use 44(d) to claim priority based on an earlier application in another country. When you file through the Madrid Protocol, you don t need to specify section 66(a). This is done automatically when the application is received from WIPO. Step 2 Examination After you file your trademark application, a trademark examiner is assigned to it. You should hear from the trademark examiner within 4-6 months after you file your application. The trademark examiner will review your application for items such as the following things: Did you properly define the owner of the trademark? Is part of your mark a non-english word that requires translation or explanation? Is the computer file or paper copy showing your mark properly formatted and acceptable? Did you correctly indicate the goods and services that the mark should apply to (using language that is appropriate and specific enough)? 2010 Wells IP Law 16

17 Is all or part of your trademark descriptive of the goods and services listed in the application? Is your trademark likely to be confused with other trademarks that are already registered or that were filed before your application was filed? The examination process may take more than a year. It consists of the trademark examiner sending letters (office actions) describing problems with the application, and you responding to those problems so that the application can proceed. Step 3 Office Actions May Be Issued The most challenging part of most trademark applications is responding to Office Actions. If you filed your application on paper, you will receive a copy of any Office Actions in the mail. If you agreed to receive notifications, you will receive an telling you that an Office Action has been issued. You can also check the status of your application and download copies of Office Actions in PDF format by visiting this website: After an Office Action is issued, you normally have six months from the date it was issued to resolve the issue completely. Either the owner of the application or an attorney that is licensed in the U.S. must file a response to an Office Action. A non-u.s. attorney cannot file a response to an Office Action. The exception is that some Canadian attorneys are permitted to file responses for applicants that are based in Canada. Note that if you filed your application through the Madrid Protocol, you may not receive the Office Action for several days or weeks after it was first issued by the U.S.P.T.O. But if you do not respond by the six-month deadline, measured from the date it was issued (not the date that WIPO or your office received it), then your application will go abandoned and will not proceed towards registration. Unless you must pay for additional classes of goods or services, as discussed below, there is no government fee associated with filing a response to an Office Action Wells IP Law 17

18 Minor Issues in Office Actions It is easy to resolve the issues raised in some Office Actions: Problems with the identity of the trademark owner (for example, is it a limited liability company or an individual); requirements for a disclaimer or a translation; or requirements that you identify other U.S. trademark registrations that you already own. The description of goods and recitation of services is usually called the description of goods and services or just the ID. This is also called the ID Manual. You can search it on the U.S.P.T.O. website by looking on the Trademarks page under Manuals, Guides, Official Gazette. In some cases you will want to argue against what the trademark examiner requires. For example, if a disclaimer is required, but you do not want to disclaim that part of your mark as being merely descriptive, then you can argue against that requirement. Issues with the Description of Good and Recitation of Services The U.S. trademark system requires that the description of goods and recitation of services be very precise. For example, you cannot merely list clothing. You must list the types of clothing: clothing, namely, shirts, pants, sweaters, vests, gloves, belts, suits. This can be confusing at times. For example, you can list footwear without anything more specific. You generally cannot use parentheses or brackets within the description of goods. You cannot use the word including in the description of goods because that implies that there are other items that are not listed. Instead, you must list all of the items that you want to be covered by the registration. For example, instead of saying clothing including shirts and skirts you must say clothing, namely, shirts, skirts. This means that the registration will only extend to the items that you actually list. You often cannot include the word system or kit without listing the components of the system or kit that you are referring to. Fortunately, you can search for items in the Acceptable Identification of Goods and Services Manual to learn what the trademark examiner is likely to accept. Also, if the trademark examiner objects to your description of goods, he or she will almost always provide a suggested revision. In many cases you 2010 Wells IP Law 18

19 will need to fill in some details based on your actual products and services. Because the U.S. trademark system requires that you list goods and services in so much detail, it often happens that you file an application in a single class (and pay for a single class) but the trademark examiner requires that you place some of the goods or services in a different class and pay additional fees for each new class. There is no penalty when this happens the fee for each class is the same as if you had included it when you originally filed the application. You can either pay the additional fees or delete the extra goods and services from the application. The division of goods and services between classes can be confusing. For example, suppose you list consulting services in your application. The U.S. trademark examiner will require that you indicate what type of consulting you provide (medical, engineering, legal, psychology, etc.). Many of these are in different classes of services. If you want to include all of them, you must pay for additional classes. Issues with the Description of Good and Recitation of Services for Madrid Applications If you file your application using the Madrid Protocol, note these important points about the description of goods and recitation of services. When you file an application (a REP) through WIPO, you can specify that some of the goods and services are not to be included in the U.S. application. This may avoid an office action in some cases, although the more common problem is that whatever remains as part of the application is not specific enough for the U.S. trademark examiner. If the goods or services in your application are in the wrong class, you must delete them from the application. You cannot change classes within an application that is based on the Madrid Protocol. If the goods or services in your application should be listed in several classes, you must delete them from the application. You cannot add classes to an application that is based on the Madrid Protocol Wells IP Law 19

20 U.S. trademark attorneys may refer to a descriptiveness refusal as a 2(e) refusal, for the section of the U.S. Trademark Act that refers to descriptiveness. U.S. trademark attorneys may refer to a refusal based on a likelihood of confusion with another mark as a 2(d) refusal, for the section of the U.S. Trademark Act that describes this basis for refusing registration. Issues with Merely Descriptive Marks If the trademark examiner thinks that your trademark merely describes the features of the goods and services listed in your application (or their intended customers, or their geographic origin, or related aspects), then he or she will issue an Office Action stating that your mark is merely descriptive and cannot be registered. You can respond to the Office Action by arguing that your mark is not merely descriptive. Usually this is done by referring to previous U.S. court cases or administrative decisions of the U.S. Trademark Trial and Appeals Board (the T.T.A.B. ). You may wish to engage a trademark attorney to assist with this. You can also argue that, even though your trademark is descriptive, it has acquired secondary meaning as a trademark in the minds of customers in the U.S. To show that your trademark has acquired secondary meaning as a trademark in the minds of customers in the U.S., you can file a declaration (a certified statement) that you have been using your trademark in the U.S. for at least five years, or you can describe the evidence that your mark is recognized by customers as a trademark. This may include describing how much you have spent on advertising in the U.S. or customer surveys that you have done in the U.S. The trademark examiner will not consider your activities outside of the U.S. Issues with Confusingly Similar Marks If the trademark examiner thinks that your trademark is likely to be confused with another trademark that is already registered in the U.S., or with another trademark application that was filed before yours was filed, then he or she will issue an Office Action stating that your mark is confusingly similar to one or more preexisting marks and cannot be registered. You can argue that your mark is not confusingly similar to the other marks that the Trademark examiner discusses in the Office Action. Usually this is done by referring to previous U.S. court cases or administrative decisions of the T.T.A.B. You may wish to engage a trademark attorney to assist with responding to these Office Actions. In most cases, you must at least discuss 2010 Wells IP Law 20

21 how the marks are different and how the goods and services are different. The trademark examiner will not consider any trademark registrations or applications outside of the U.S. Final Office Actions If the trademark examiner agrees with your argument, then your trademark application will move to the next phase (See Step 6, below). If the trademark examiner does not agree with your argument, then he or she will issue a Final Office Action. A Final Office Action restates the same objection as the first Office Action, sometimes with additional comments or evidence. You can respond to the Final Office Action, but if you do not respond, or if you respond and your response is not successful, your trademark application will go abandoned and will not become a registered trademark. After a Final Office Action is issued, you normally have six months from the date it was issued to resolve completely all of the issues raised in the Final Office Action. Appeals If you disagree with the position of the trademark examiner after you receive a Final Office Action, you can file an ex parte appeal with the T.T.A.B. (the Trademark Trial and Appeals Board). An ex parte appeal (an appeal by just one party you) is an administrative procedure in which a panel of three people at the T.T.A.B. reviews your application and decides whether or not the trademark examiner was correct in refusing to register your mark. If you disagree with the actions of the T.T.A.B., you can file a lawsuit in a U.S. federal court to try to force the U.S.P.T.O. to register your trademark. Additional Office Actions Normally, the trademark examiner will issue a single Office Action that lists all of the issues found in your application. But occasionally, the trademark examiner will issue additional Office Actions that raise items not mentioned in the first Office Action. This may occur because of further review by a supervisor at the U.S.P.T.O., or because the trademark examiner 2010 Wells IP Law 21

22 overlooked something. In addition, the trademark examiner may issue an Office Action if there is a problem with material that you submit later in the registration process, such as a specimen of use (See Step 6, below.) Step 4 Publication for Opposition Not every application receives an Office Action, but many applications do. After all of the issues raised in any Office Actions are resolved, your application will be published for opposition. In this stage, the details of your application are published in the Official Gazette of the U.S.P.T.O. Beginning from the date on which your application is published in the Official Gazette, members of the public have 30 days to file an opposition with the U.S.P.T.O. An opposition is an administrative procedure before the T.T.A.B. in which someone says that they do not believe your application should be allowed to register because it would interfere with their legal rights. Normally someone would file an opposition because that person owns a trademark that is similar to the mark you are trying to register. Instead of filing an opposition during the 30 days, a person or company can file a request for more time to file an opposition, so that the 30-day period is lengthened. But you would still have notice of this request for more time during the initial 30- day period. During any extended time periods for filing an opposition, the person that requested the extension of time will normally contact you to investigate and discuss the matter, in the hope that an arrangement can be reached so that the expense of an opposition can be avoided. If someone does file an opposition (not just a request for more time during which they can file an opposition), then you must participate in the administrative procedure at the T.T.A.B. If you fail to participate, you will lose by default and your trademark application will go abandoned and will not be registered Wells IP Law 22

23 Step 5 Allowance After your application has been approved by a trademark examiner and has completed the publication phase without an opposition, your mark is allowed by the trademark examiner. Being allowed means that the trademark examiner believes that the application is eligible to become a registered trademark. If your application was opposed during the publication phase (Step 4 above), it will not be allowed until after the opposition is resolved. The U.S.P.T.O. will send a Notice of Allowance to the correspondent listed on the application. This will normally be either your address or the address of your attorney. If you have agreed to receive notifications, you will receive an telling you that the mark has been allowed. If you filed your application under the Madrid Protocol, the Notice of Allowance means that your application will proceed to registration within 1-3 months. You do not need to take any further action. If you filed your application under section 1(a) of the Trademark Act, for marks that are already in use, then the Notice of Allowance means that your application will proceed to registration within 1-3 months. You do not need to take any further action. If you filed your application under section 1(b) of the Trademark Act, indicating that you have an Intent to Use your trademark in the U.S., then the date of the Notice of Allowance begins a six-month period during which you must submit evidence of using the mark or else extend that time (see the next section on Statements of Use). Step 6 A Statement of Use May Be Required As discussed in previous sections, trademark rights in the United States are based on using a mark in commerce. If you filed your application under the Madrid Protocol, you do not need to show use of your mark in commerce before the mark is registered. When you receive a Notice of Allowance, 2010 Wells IP Law 23

24 you don t need to do anything else. You will receive a registration certificate in 1-3 months. But notice that (1) in your application, you stated that you have an intent to use the mark in commerce in the United States; (2) you must still provide evidence of use five years after your registration date (see the next section); and (3) if you do not use your mark in the United States, another person can try to cancel your trademark registration. If you do not use your mark in the United States for three years or more, your registration will be at particular risk of cancellation by others. If you filed your application under section 1(a) of the Trademark Act, you indicated in your application the date that you started using your mark in commerce and provided something showing evidence of your use. When you receive a Notice of Allowance, you don t need to do anything else. You will receive a registration certificate in 1-3 months. If you filed your application under section 1(b) of the Trademark Act, indicating that you have an Intent to Use your trademark, then you must file a Statement of Use before your application can be registered. If you filed your application under section 44(e) of the Trademark Act, based on a trademark registration in another country, you do not need to submit a statement of use before your mark can be registered. When you receive a Notice of Allowance, you don t need to do anything else. You will receive a registration certificate in 1-3 months. If you are required to file a Statement of Use, you have six months to file it, beginning on the date that the U.S.P.T.O. issues the Notice of Allowance. The fee to file the Statement of Use is US$ for each class of goods or services in your trademark application. You must provide a separate Specimen of Use for each class of goods or services in your application, but the Specimens can be identical copies if that is appropriate based on your goods and services. (For example, if identical labels are used on a blanket (Class 24) and on a shirt (Class 25), you could use two identical labels as specimens, one for each class.) 2010 Wells IP Law 24

25 If you are not using your mark in the United States within that six-month period, you can pay a fee to extend the deadline for another six months. You can repeat this several times by paying additional fees, but you must watch your calendar carefully. If you miss the six-month deadline without filing a Statement of Use or a request to extend the deadline, your application will go abandoned. The fee to extend the deadline for filing a Statement of Use by six months is US$ for each class of goods or services in your trademark application. What is use of a trademark? Many court decisions have analyzed this question. In general, it is the sale of goods or services across state or national boundaries, where your trademark is used to identify the source of those goods or services. This is normally called use in commerce or use in interstate commerce under U.S. trademark law, because the U.S. constitution permits the U.S. federal government (which will issue your trademark registration) to regulate interstate commerce (commerce between the states of the United States). When you file a Statement of Use, you provide evidence that you are using your mark in commerce. The evidence is called a Specimen or a Specimen of Use. If you are filing your application electronically through TEAS, you upload a computer file of your evidence. You also state the date on which you began using the mark in commerce in the U.S. The date that you began using the trademark in the U.S. can be a date before you filed your application, or between the date you filed your application and the date that you file the Statement of Use. The date should be the earliest date that you are confident that you used the mark in the U.S. But it is fine if you discover later that you used your mark before the date you specify in the Statement of Use. If a dispute arises later on, you will have the opportunity to prove that you used your mark even before the date that you indicate in the Statement of Use. What evidence what Specimen of Use should you provide with your Statement of Use? This depends on the type of goods and services that you sell under your mark. Listed below are several examples: 2010 Wells IP Law 25

26 A photograph of a product package showing your trademark, such as on a can of food. It is not necessary that the photograph clearly shows the nature of the products inside the package. A photograph of a product showing your trademark affixed to the product itself, such as on the top of a laptop computer. A photograph of a label within clothing, where the label shows your trademark. A screen capture of a web page showing your product offered for sale, with your trademark visible on the web page in clear association with the product and a method of purchasing the product from that page. Note that special requirements apply to using web pages as a Specimen of Use. A photocopy of a brochure describing your services and showing your trademark. Note that advertisements can often be used as Specimens of Use for service marks, but cannot be used as Specimens of Use for regular trademarks (for products). If you are filing your Statement of Use by mail, you can send in a product label, empty package sample, photograph, or other appropriate evidence as a Specimen of Use (including an advertising brochure for service marks). Step 7 Registration After you receive a Notice of Allowance and after you have filed a Statement of Use (if required), you will receive a certificate of registration. This is a paper document that shows the date of registration, the registration number, and other official information. There is no fee for the certificate of registration. It is simply issued to you once all of the requirements are fulfilled as discussed in the previous sections. If you are working with a trademark attorney, he or she will normally charge a small fee to review the registration for correctness, make a record of important deadlines (see the following sections), retain a 2010 Wells IP Law 26

27 photocopy of the certificate of registration for the attorney s files, and forward the original certificate to you with a letter of instructions. With your registration completed, you can use the symbol next to your mark on goods, services, and advertisements in the U.S. You should immediately read through the registration certificate carefully to be certain that all of the information it contains is correct and complete. You should inform the U.S.P.T.O. immediately if there are errors (for example, if changes to your address or the goods and services that you previously submitted are not shown). Make a copy of the registration certificate to keep handy and store the original in a safe place. You can buy a replacement from the U.S.P.T.O. if it gets lost. Make a note on your calendar of the deadlines described in the sections that follow. If you miss a deadline, the U.S.P.T.O. will automatically cancel your trademark registration. If you are working with a trademark attorney, he or she will use special software to keep track of these deadlines and will contact you in advance of the deadlines to coordinate filing the necessary paperwork. Step 8 Evidence of Use Before End of Sixth Year The U.S. Trademark Act requires that, before the sixth anniversary a trademark is registered, every owner must provide evidence (a Specimen of Use) and an affidavit that the trademark is being used within the U.S. If you filed your application under the Madrid Protocol, the requirements regarding filing evidence of use before the sixth anniversary are described in Section 71 of the U.S. Trademark Act (15 U.S.C. 1141k). For applications that were not filed under the Madrid Protocol, the requirements regarding filing evidence of use by the end of the sixth year are described in Section 8 of the U.S. Trademark Act (15 U.S.C. 1058) Wells IP Law 27

28 To satisfy Section 8 or Section 71, as appropriate, you must file a legal statement (an affidavit) affirming that you are using the mark in commerce within the U.S., and also file a Specimen of Use. The Specimen of Use is normally a photograph or digital image showing the mark used on or in association with your goods or services. The section on Step 6, above, lists some examples of Specimens of Use that are typically acceptable. Section 8 gives you a one-year window to file the required materials. The one-year window begins on the date five years after the date of your U.S. trademark registration and ends on the date six years after the date of your U.S. trademark registration. You can have an extra six months if you pay an additional fee. If you do not file the required materials under Section 8, the U.S.P.T.O. will cancel your registration a few months after your filing deadlines. Section 71, for Madrid Protocol filings, gives you a one-year window to file the required materials. The one-year window begins on the date five years after the date of your U.S. trademark registration and ends on the date six years after the date of your U.S. trademark registration. The dates associated with your International Registration and your Request for Extension of Protection are irrelevant; you must keep track of the date that your application was registered in the U.S. Also, for Madrid Protocol filings, there is no grace period. If you do not file the required documents under Section 71 before the sixth anniversary, your U.S. registration will be cancelled. The fee to file an affidavit and Specimen of Use under Section 8 is US$ for each class of goods or services in your trademark application. If you miss the deadline of six years after your U.S. registration date, you can file the Section 8 materials within six months after that deadline, but you must pay an additional fee of US$ for each class of goods or services in your trademark application (for a total of US$ for each class). The fee to file an affidavit and Specimen of Use under Section 71 for Madrid Protocol-based registrations is US$ for each 2010 Wells IP Law 28

29 class of goods or services in your trademark application. The deadline to file it cannot be extended past the six-year anniversary of your U.S. registration date. You can file materials under Section 8 or Section 71 either electronically or by mail. Step 9 Section 15 (Possible After Five Years of Use) At the same time that you file evidence of using your trademark in the U.S. (see the previous section), you may wish to file a statement under Section 15 of the Trademark Act. Section 15 of the Trademark Act lets your mark become incontestable. A registered trademark that is incontestable is not really incontestable that it, your registration is still subject to cancellation for some reasons. But when a registered trademark becomes incontestable under Section 15, it is more difficult for someone to succeed at cancelling your trademark registration. Section 15 provides additional legal protection for registered trademarks. In order to receive the protection of Section 15, you must make a legal statement (file an affidavit) stating that you have been using your registered trademark in commerce in the U.S. for at least five consecutive years. Because this period of time is the same as the beginning of the period during which you can file evidence of using your trademark under Section 8 or Section 71, most people will file materials for both Section 8 (or 71) and for Section 15 at the same time. But you can file a statement under Section 15 at any time that you can meet the requirement of five consecutive years of trademark use in the U.S. Section 15 requires that you pay an additional fee. If you do not wish to file under Section 15, you do not need to do so. The fee to file a statement under Section 15 is US$ for each class of goods or services in your trademark application. When you file a statement under Section 15, your statement is not examined and you do not submit any evidence. If your statement is correct in form, it is simply recorded Wells IP Law 29

30 Step 10 Renewal You must renew your trademark registration every ten. At the same time you file your application for registration, you must file evidence that you are still using the trademark in the U.S. If you filed your application under the Madrid Protocol, you must file renewal paperwork with the World Intellectual Property Organization ( WIPO ). The date when you must file for renewal is based on the date of your International Registration, not on the date of your U.S. registration. WIPO will communicate information about your renewal to the U.S.P.T.O. If you filed your application under the Madrid Protocol, you must still file evidence that you are still using your trademark in the U.S. This must be filed with the U.S.P.T.O. The date that you must file this evidence is based on the date of your U.S. registration, not the date of your International Registration. If you do not renew your registration and provide evidence of use every ten years, the U.S.P.T.O. will cancel your registration. For a Madrid Protocol-based registration, If you do not provide evidence of using your trademark in the U.S. to the U.S.P.T.O. on every tenth anniversary beginning on the date that your U.S. registration was issued, then the U.S.P.T.O. will cancel your U.S. registration. Except for Madrid Protocol-based registrations, you may file an application to renew your U.S. trademark registration beginning on the day nine years after the date of your U.S. registration. If you do not file before the day ten years and six months after the date of your U.S. registration, then your registration will expire. If you wait until the final six months of this period, you must pay an additional fee. (See 15 U.S.C. 1058(b).) For Madrid Protocol-based registrations, you may file an application to renew your U.S. trademark registration beginning on the day nine years and six months after the date of your U.S. registration. If you do not file before the day ten years and three months after the date of your U.S. registration, then your registration will expire. If you wait until the final three months 2010 Wells IP Law 30