Before a trademark is registered, a trademark application gernerally pends twelve to eighteen months at the United States Patent and Trademark Office (USPTO). At the USPTO, the trademark application will pass through three stages: (1) the examination process, (2) publication for opposition, and (3) notice of allowance.
Examination of a trademark application takes place approximately four months after the trademark filing. During this phase, an Examining Attorney at the USPTO reviews the trademark application and determines whether the trademark may be registered. If the Examining Attorney finds that the trademark should not be registered, he will issue an Office Action explaining reasons for refusal. The applicant must respond to any Office Action within six months; otherwise, the application is considered abandoned. Two common grounds for refusal by an Examining Attorney are: (1) the likelihood that consumers will be confused about the relationship between one party’s previously registered trademark or trademark application and the applicant’s trademark, and (2) the likelihood that the applicant’s trademark is merely descriptive of the goods or services.
The second phase for registering a trademark is publication for opposition. After passing through the examination process, a trademark application will be published in the Official Gazette, a weekly publication of the USPTO. Any party that believes registration of the trademark will harm them has thirty days from the publication date to file a Notice of Opposition. Such opposition is rare, only occurring in 3% of trademark filings. In the event of an opposition, a proceeding may be held at the USPTO to determine whether registration should be denied.
After a trademark application passes through the opposition stage, a Notice of Allowance will issue. If the trademark application was filed based on use of the mark, the USPTO will register the trademark and issue a registration certificate about four months after the date the trademark was published. If the trademark filing was filed based on an “intent to use”, the Examining Attorney will issue a Notice of Allowance about four months after the date of publication. The applicant then has six 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. If the Statement of Use is filed and approved, the USPTO will issue a registration certificate. Requests for extensions of time may be filed every six months for approximately three years, if use has not yet been established by the applicant.
After registration, an owner must complete several tasks to maintain rights to the trademark. Between the fifth and sixth year after trademark registration, the trademark owner must file an Affidavit of Use in Commerce (“Section 8 Affidavit”) at the USPTO to avoid cancellation. An owner may also file an Affidavit of Incontestability (“Section 15 Affidavit) which states that the right to use the registered mark in commerce for the goods or services is incontestable. A Section 15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years.
In addition, the registered trademark owner must file an Application for Renewal of Registration and pay renewal fees at ten year intervals after the initial registration date. The Application for Renewal requires a verified application setting forth those goods or services recited in the registration in connection with which the trademark that are still in commercial use. Also, the Application for Renewal requires attachment of a specimen showing current use of the mark. The renewal application may be made at any time within six months before the expiration of the period for which the registration was issued or renewed, or it may be made within three months after such expiration contingent upon payment of an additional fee. Like the Section 8 Affidavit, failure to filed an Application for Renewal results in cancellation.
Unlike a patent or copyright, a trademark registration does not expire or end. So long as the owner can showuse of the trademark and meet the USPTO requirements, the trademark registration will not expire. Abandonment of trademark occurs when a trademark is not used, or when it is deliberately discontinued.
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