Trademark Filing in 10 Easy Steps

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Trademark Filing Basics – Part 6: Getting your Trademark and Maintaining your Registration

Trademark Filing Example Certificate of RegistrationCertificate of Registration or Notice of Allowance
If the Mark is published based upon the actual use of the Mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the Mark and issue a registration certificate in about twelve (12) weeks after the date the Mark was published.

If the Mark is published based upon the applicant’s bona fide intention to use the Mark in commerce, the USPTO will issue a Notice of Allowance about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose.

The applicant then has six (6) months from the date of the Notice of Allowance to either:

  • use the mark in commerce and submit a Statement of Use; or
  • request a six-month Extension of Time to file a Statement of Use.

Both forms are available at http://www.uspto.gov/teas/index. html.

If the  Statement of Use is filed and approved, the USPTO will issue the registration certificate.

Additional requirements for “Intent to Use” applications

Before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce, the owner must:

  • use the mark in commerce; and
  • file an Allegation of Use.

Allegation of Use

An “Allegation of Use” is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the Allegation of Use, the owner must submit:

  • a filing fee of $100 per class of goods/services; and
  • one specimen showing use of the mark in commerce for each class of goods/services.

A form for filing the allegation of use is available at http:// www.uspto.gov/teas/index.html.

You may file the Allegation of Use only

  • on or before the day the examining attorney approves the mark for publication in the Official Gazette (an Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use); or
  • on or after the day the USPTO issues the Notice of Allowance (an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use).

The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued, the USPTO will return it.

Deadlines for filing the Statement of Use after the Notice of Allowance

Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it.

If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the six-month period, or the application will be declared “abandoned.”

Request for an Extension of Time to file a Statement of Use

An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce.
A filing fee of $150 per class of goods/services must accompany the Extension Request.

The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html.

The Extension Request, if granted, gives the owner an additional six (6) months to either:

  • use the mark in commerce and file a Statement of Use;

or

  • file another Extension Request.

You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed.

Maintaining a Federal Trademark Registration

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

In general, the owner of a registration must periodically file:

  • Affidavits of Continued Use or Excusable Nonuse and
  • Applications for Renewal.

Forms for filing these documents are available at http://www. uspto.gov/teas/.


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