trademark-filing

Trademark Filing Requirements: Overview Guide

Your company’s brand is critical to its success. The procedure of trademark filing isn’t simple, but the protection it provides for your brand is well worth your time and effort. You must fill out and submit a trademark application to the United States Patent and Trademark Office (USPTO) in order to register a trademark. You can either file a paper application or use the Trademark Electronic Application System (TEAS), an online trademark filing tool. However, you should gather information regarding the trademark filing requirements before proceeding with the application procedure. Thus, the following information must be included in your trademark application.

Also Read: Filing a Trademark Application in the United States: Overview

Trademark Filing Requirements to Obtain a Filing Date

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In order to get a trademark filing date as quickly as possible, an applicant must keep the following items in mind while completing the trademark filing procedure.

  1. The applicant’s full name;
  2. A name and address to which the United States Patent and Trademark Office (USPTO) should send correspondence;
  3. A clear drawing of the mark for design and other atypical marks;
  4. A list of the goods and/or services sold or offered in connection with the mark is or will be provided;
  5. At least one class of products or services has a filing charge.

Also Read: Process Involved in IP India Trademark Filing

Get a Trademark: Additional Requirements

As you progress through this part, keep in mind the additional trademark filing requirements that an applicant must follow when filing a trademark application.

  1. Background information on the applicant;
  2. The sort of legal entity if the applicant is not an individual;
  3. Citizenship, or the state or country in which you extablish the company;
  4. The legal foundation for the filing;
  5. A statement that you confirm. A person having legal authority to bind the applicant, (2) a person with personal knowledge of the facts and actual or implicit authority to act on behalf of the applicant, and (3) an attorney with an actual or implied written or verbal power of attorney from the applicant may sign an application;
  6. A description of the mark for marks other than conventional character word marks;
  7. A drawing of the mark desired to face registeration if it is not a sound, scent, or other non-visual mark;
  8. An English translation or transliteration of any non-English terms in the mark, if appropriate;
  9. Any filing fees for extra classes that remain unpaid;
  10. The USPTO encourages international applicants to appoint a domestic representative to receive notices and process on their behalf.

Also Read: 5 Key Trademark Benefits

Trademark Filing Requirements for Use-Based Applications

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A use-based application is one in which the applicant is already using the mark in commerce when the federal trademark registration application is submitted. Shipping or selling items with the mark, or performing services after advertising those services with the mark, are examples of how the Mark might be used in business.

Before the mark may be registered, the applicant must include certain dates linked to the first use of the goods and/or services in the application. This is the first date that items bearing the mark were sold or transported, and this is the first day that services promoted under the mark were provided. Each class of goods and services must have two dates: I the date of first use anywhere, and (ii) the date of first use in interstate commerce, or between the US and another country. These dates will be the same for many candidates.

In addition, the applicant must submit a “specimen of use” demonstrating how the mark is used in commerce in connection with at least one item in each class of goods or services. Packaging, labels, or tags for the goods, as well as a display related to the items, are acceptable trademark specimens. Advertisements and promotional materials for the services, including pages from the applicant’s website, are examples of eligible service mark specimens.

Also Read: Trademark Registration Fees: Know All the Costs

Trademark Filing Requirements for Intent-to-Use Applications

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A trademark registration usually necessitates the use of the mark in commerce. So, how do you apply for registration if you haven’t used your trademark yet? An Intent-To-Use trademark application (ITU application) permits an applicant to file an application to register a mark before you use it in commerce, as the name suggests. The use of your trademark in commerce refers to its use in conjunction with the sale or provision of the relevant goods or services. Once you use the mark in connection with the products or services mentioned in the application, the applicant must file a Statement of Use.

A bona fide intent to use the mark in commerce for all of the goods and/or services included in the application is required. The lack of a bona fide or real purpose to use the mark can be used as a defense in adversarial proceedings or to question the validity of the application or resulting registration. As a result, in the event that documentation evidence of the applicant’s plans to use the mark is needed later, the applicant should maintain it.

Statement of Use

Before the application can move forward to registration, the applicant must show that the mark is in use in interstate commerce in the United States and provide a specimen of use for each class of products or services. Depending on when you file it, this document is an Amendment to Allege Use or a Statement of Use. Either document must I attest that the applicant or its licensee is using the mark in commerce; (ii) state the dates of first use for each class anywhere and in U.S. interstate commerce; (iii) include a specimen for each class, along with a description of the specimen; and (iv) include the required fee for each class.

Also Read: Trademark Filing Timeline

Post Trademark Application Filing Process

If you file the application online, the USPTO will send an official filing receipt through email. If you file the application on paper, the USPTO will send an official filing receipt via mail. Within 14 days of filing, a serial number appears assigned, and the application’s data should appear on the USPTO’s website. Moreover, you can track the application’s progress at http://tsdr.uspto.gov/.

One usually considers an application after three to four months of its filing. An Office Action appears issued if the USPTO examiner objects to the mark remaining registered on substantive grounds (such as a likelihood of confusion with other marks on the USPTO register). Alternatively, it raises a technical objection that you must address before the application can move forward (such as requiring amendments to the description of goods and/or services).

Otherwise, the application would remain abandoned if the applicant does not react to the Office Action within six months after its mailing date. The application will appear accepted for publishing in the Trademark Official Gazette once you resolve these issues. Moreover, if the examiner raises no objections, a Notice of Publication will remain issued with the publication date. Within 30 days of the publication date, any third party that feels the mark’s registration would do it harm may oppose the application or file a request for an extension of time to oppose.

Certificate of Registration

The USPTO issues a Certificate of Registration for use-based applications under Section 1(a) and applications under Sections 44 and 66. Alternatively, it may raise a Notice of Allowance for intent-to-use applications under Section 1(a). This is when the application does not successfully contest (b). An applicant has 36 months from the Notice of Allowance date, the “allowance” period, to produce proof of use for intent-to-use petitions, otherwise, the application would remain abandoned. The applicant must file either a Statement of Use or a request for an extension of time to file a Statement of Use every six months during the allotted period, indicating a continued bona fide purpose to use the mark for the products and/or services in the application.

Also Read: Online Trademark Filing: Know How to Do it?

When Does a Trademark Application Mature to Registration?

The registration usually takes 9 to 12 months to issue. This is only possible if one raises no substantive objections, makes no oppositions, and files all documents online. In some cases, Office Actions may take place and relevant documentation (such as a foreign registration) is not yet available. Moreover, the application remains challenged, or documents filed on paper, so, the process can take substantially longer.

Also Read: Top 6 Benefits of Seeking Trademark Filing Services

Need Trademark Filing Services? Choose The Trademark Filing Company!

As a result, securing the required protection for your brand by registering a trademark is critical. There are a lot of fees that remain associated with trademark registration, and it is not a cheap process. As a result, if you require professional assistance, The Trademark Filing Company can assist you. We concentrate on preventing copycats from imitating your brand. Our team has years of trademark filing experience and specializes in supplying gold-standard trademark data. We are aware of the most recent trademark laws’ rules and recommendations. We’ll make certain your trademark application follows them. We don’t stop there, though. Because you can’t be concerned about your trademark all of the time, you can use our trademark monitoring services.

To make an inquiry, visit The Trademark Filing Company.

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