|
|
|||
|
The Law Office of Joan I. Norek |
|||
|
Intellectual Property |
|||
|
Chicago, Illinois |
 |
||
|
|
|||
|
|
|
||
|
1. Registration application preparation and filing, and the availability/protectibility search before application preparation, includes at least the following steps:
2. Examination of application by USPTO trademark examiner An examiner might raise minor, or serious, technical objections and/or refusals to register, or no issues at all. Steps to be taken and costs depend on the type of 'Office Action' issued by the examiner. One or more of the following steps might be required.
3. Publication for Opposition All registration applications that pass the examination stage are published to provide an opportunity to third-parties to oppose the registration. Only a minor percent of applications are opposed. In routine registration processes, this step is merely noted and reported as the application is tracked through the post-examination handling stages by the USPTO. An opposition, if filed,
halts the registration process until the opposition is terminated. Some
oppositions can be easily settled, while others involve protracted
litigation-type procedures. The value of the trademark is one of many
factors to be considered.
more 4. Issuance of Certificate of Registration or (ITU) Notice of Allowance All registration applications that pass the opposition-window period without opposition are then either issued (Certificate of Registration) or allowed (ITU application's Notice of Allowance). In routine registration processes, this step is merely noted and reported as the application is tracked through the post-opposition-window handling stages by the USPTO. If an application was filed as an ITU, the registration process goes on to # 5 below 5. (ITU applications only) Filing a Statement of use All ITU registration applications require the actual commercial use of the mark, and then the filing of a Statement of Use, prior to registration. For this reason, a Notice of Allowance only is issued when the application passes the opposition-window period without opposition, unless the Statement of Use was earlier filed. The Notice of Allowance starts the running of the first six-month time period during which either a Statement of Use, or a time extension request, must be filed. Failure to file an acceptable Statement of Use, or a time extension request, in any of the six month periods, will extinguish the application and the constructive priority rights of its filing date. Time extensions are permitted for five additional six-month periods (maximum of up to three years from the date of the Notice of Allowance). A USPTO examination of a Statement of Use to determine its acceptability can take six weeks or more. If a Statement is filed within the second half of the six-month time period, filing a concomitant extension request is a prudent hedge against losing the application, should the Statement be rejected after the time period has lapsed. The ITU post-Allowance steps therefore are:
6. Post-Registration Renewals Federal registrations must be maintained by periodic renewals, which include confirmations of continued use of the trademark, at ten year intervals after registration, plus a one-time use confirmation between the fifth and sixth year registration anniversary. The filing between the fifth and sixth year registration anniversary may include a Section 15 filing which makes the registration invulnerable to claims of prior use, unless the mark was not in continuous use over the years or there is unresolved litigation concerning the trademark. The renewals and use confirmations should be filed within the ninth and tenth anniversary of registration, then the nineteenth and twentieth anniversary, and so forth. Each of these filings requires submission of current use specimens (sample of the current label, or current signage, or current packaging, etc.). If the trademark on a current use specimen does not exactly match the trademark as registered, a commercial-impression issue is raised. If the two are deemed to give the same commercial impression, the specimen is accepted, and if not, the registration will die unless acceptable specimens are provided before the time expires. back to corporate trademark registrations other topics - trademark myths, naming and branding, oppositions, IP symbols, domain names, trademark infringement, trademark weight, why protect a trademark, about trademarks
|
|||