Bernstein & Associates

Attorneys At Law, P.C.

6600 Peachtree Dunwoody Road, N.E.

Embassy Row 400, Suite 495

Atlanta, Georgia 30328-1649

 

Intelligent Innovation Managementsm

 

Patent, Trademark,                                                                                           Telephone (770) 671-1755

and Copyright Law                                                                                                Facsimile (770) 671-1161

Related Business Matters                                                                               www.globaliplaw.com

 

 


THE TRADEMARK REGISTRATION PROCESS:
FROM APPLICATION TO REGISTRATION AND BEYOND

The following is a summary of the various stages of the trademark registration process that is shown in the accompanying status report.

1.       Application Filed:

A.     Filing Date and Serial Number: We file most trademark applications electronically with the U.S. Trademark Office, which means we receive a confirmation of the filing date and assigned serial number within hours of filing.

B.     Examination: The application is normally examined between 3-4 months after filing. For a trademark that is in use, if there are no major problems, the entire registration process normally takes about a year.

C.     Use of ™ Symbol: As soon as the trademark is used commercially, the ™ or SM symbol ™ for products, SM for services) should be used next to the mark to indicate that it is being used as a trademark and to establish common law rights. The ® symbol can be used only after a federal registration has issued. Using the proper trademark notice symbol can help preserve the applicant’s right to collect damages for infringement. The generic name of the product should be used with the trademark; for example, “Cardio Theater™ entertainment systems.”  Please also see our website for a discussion of proper trademark usage.

D.     Establishing Use: If the trademark is not yet in use, please notify us when use commences so that we may prepare and file the appropriate documents demonstrating use (see Section 5B below).

E.      State Registration: If the trademark is to be used significantly in Georgia (even if just in Atlanta), consider registering the trademark with the Secretary of State’s office once use has begun. Georgia is one of the few, if not only, states which has a great statute that permits a state trademark holder to obtain up to $10,000 in damages from an infringer without having to establish the amount of damages suffered. This can be an extremely effective tool in getting an infringer to stop. Our fee for the application through registration is $215, including the filing fee for one class. Georgia permits only one class of products or services per application.

F.      International Protection:

i.      If protection outside of the United States is or will be important, it is beneficial to file those applications within six months from the filing date. Filing foreign applications within this time period gives you the effective filing date of the U.S. application. Applications can be filed in other countries after this date, but will receive only the actual filing date. Please let us know as soon as possible whether or not international trademark protection is desired. We can then develop an appropriate cost estimate. We must, however, have instructions no later than five months after the date of filing to provide adequate time in which to notify our international associates and avoid expedited processing fees. Trademark registrations are enforceable only within the country in which registration is obtained. Most European countries are members of a European treaty in which one application covers all member countries. Other countries are done on an individual basis.

2.       Office Actions: When the application is examined, one of several possible results can occur.

A.     Approved: The application then moves to Publication (see below).

B.     Objected: There is at least one informality, most of which we handle on a routine basis as part of our fee. Examples of informalities include revising the description of products or services, adding a disclaimer, providing a formal drawing or substitute specimen, etc. We can often resolve the issue by calling the Trademark Office or by filing a simple amendment. Successful resolution of the matter usually results in an Examiner’s Amendment being sent and the application advanced to Publication.

C.     Refused: The examining attorney has refused registration of the mark for any of several reasons. We forward the Office Action to you and provide an explanation of what has occurred and our recommendation. Examples of common grounds for refusal include: (a) existence of a registered trademark which is confusingly similar, (b) the trademark is descriptive or generic, (c) the trademark is merely a person’s surname, and (d) the trademark is merely ornamental and does not serve as a trademark. We have six months from the mailing date of the Office Action to respond. It is preferable to respond within two months. No extensions are possible. A final Office Action means that the only response is to amend the application to comply with the examining attorney’s requirements or to appeal the refusal.

D.     Suspended: The examining attorney has cited at least one pending trademark application as potential grounds for refusing registration. Since only a registration can be a refusal, the examining attorney may suspend the application until (a) the cited application becomes a registration (which can take years to occur in some cases), in which case the suspension becomes a refusal; (b) the cited application is abandoned, in which case the refusal is withdrawn; (c) we successfully distinguish the applicant’s mark and persuade the examining attorney to withdraw the suspension; or, (d) we negotiate with the cited application’s owner to permit the present application to coexist with their application.

If we receive a refusal or suspension, we will report this to you. We will also provide a cost estimate for preparing a response. Review and reporting of substantive rejections and preparing substantive amendments with legal arguments are charged at our standard rates and are not considered part of our project fee.

3.       Examiner’s Amendment: If we reach a resolution with the Examining Attorney, an Examiner’s Amendment will be mailed to us summarizing the corrections or agreement reached. This is frequently an expedient  mechanism for advancing the application process. It usually takes 1-3 weeks after we reach an agreement for the Examiner’s amendment to reach us. The application will then move to Publication.

4.       Notice of Publication: If the mark is approved, it will be published after about 2-3 months in the official Trademark Gazette for a period of thirty days. If no one opposes the mark within that time, we will receive a Notice of Allowance.

5.       Notice of Allowance: This notice indicates that the certificate of registration will be registered if commercial use has been established. If use has not been established, please let us know as soon as commercial use has begun so that we may prepare a Statement of Use for execution.

A.     Valid Commercial Use:

i.         Products: Valid use can be commercial sales of product. Even shipping a sample or demonstrating the product at a trade show in or out of state may be sufficient commercial use. The earliest date must be the date of use of the trademark on or in connection with the goods, such as on packaging, labels, hang tags, printed on the product or on manuals accompanying the products when sold, etc.

ii.       Services: Offering the service commercially. Valid proof can be fliers, brochures or advertisements, website advertising the services, etc. Stationary, envelopes, business cards, and invoices are not valid evidence of use.

B.     Deadline: We must file the Statement of Use within six months of the Notice of Allowance, although up to five six-month Extensions of Time can be filed, if necessary. Our fee for preparing the Statement of Use or the Extension of Time is $200. The government filing fee per class of products or services is $100 for the Statement or $150 for the Extension. If instructions are received less than two weeks prior to the deadline, an additional $100 is added to our normal fee.

6.       Registration: The Certificate of Registration is sent typically within about two months after the Statement of Use is accepted or after the Notice of Allowance is sent, if the trademark is already in use. The Certificate of Registration we forward to you should be kept in a secure place with other legally significant documents.

A.     Duration: The registration will remain in force for ten years from the registration date, and is renewable indefinitely for additional ten year periods so long as the mark is in use.

B.     Use of the ® Symbol: Now that this mark is registered, we recommend using the trademark registration symbol ® or the notation “Reg. U.S. Pat. & TM Off.” wherever the mark appears. See our website for guidelines on proper usage.

7.       Fifth Year Continuing Use Affidavit: In order to avoid expiration of the registration, we must file a document between the fifth and sixth years after initial registration indicating the mark is still in use. If the owner moves or if the mark is transferred we must be notified so that we can send a reminder to the owner. Unfortunately, we cannot be responsible for failure to file the Affidavit if we cannot locate the owner. Our fee for preparing and filing the Affidavit is $400 and the government filing fee is $100 per class. Once the Affidavit is accepted the registration becomes “incontestable,” which strengthens the mark.

8.       Renewal: The registration can be renewed in the tenth year after registration, if it is still in use. Failure to do so will result in expiration of the registration. Our fee for preparing and filing the renewal application is $400 and the government filing fee is $400 per class. We will send one reminder as noted above.

9.       Licensing of the Mark: We strongly advise that if another party is given permission or a license to use the trademark, a written license agreement be prepared and signed. If licensing activities have begun, please contact us to prepare the appropriate documents. Licensing the trademark without a written license may result in the trademark being abandoned. We have successfully negotiated many trademark licensing relationships and would be pleased to assist you in this regard.

10.   Assignment of the Mark: Trademarks can be assigned to another party as long as the mark AND the good will associated with the mark are assigned. Be aware that a trademark application based on “intent to use” that has not had use established cannot be assigned unless the entire business is being transferred with the mark. Assignment of an intent to use application can result in the application being invalidated and losing one’s place in line at the Trademark Office. Our fee for preparing and recording the trademark assignment is about $200, including the recordation fee. We typically receive the Notice of Recordation in about one day.

11.   Additional Applications: If a logo, design or stylized rendition of the mark or a new slogan is to be used, please let us know as it may be advisable to file additional protection. If the mark is changed after the application is filed, we may have to file another application as any material alteration to the mark can invalidate the registration.

If you have any questions regarding the trademark registration process, please contact our trademark administrator, Brandi Watson, who can be reached at bwatson@globaliplaw.com or by telephone at (770) 671-1755. Please also visit our website at www.globaliplaw.com.