Filing a Trademark Application in the United States

As a trademark proprietor, you must make sure you are attentive of the renewal necessities on your registration of trademark. If you are not alert of the renewal time limits then you must know that begining this year, the USPTO will be sending notices for renewal to remind trademark holders of these vital dates. Trademarkregistration is exposed to immediate cancellation after a missed deadline, and the accountability to remember the dates and to make the essential filings previously lay completely with the owner. The new USPTO reminders will alleviate some of that load.

You still have a huge deal of liability for trademark maintenance and renewal as a trademark owner, but – don’t let this new step of help by the USPTO holdup your obligations in taking one of the most dangerous steps in keeping the rights to your mark. Here are some essential things to know about the trademark renewal procedure, and what you can now anticipate from the USPTO.

Getting via email your USPTO trademark renewal prompts

The USPTO would send Online Trademark Registration renewal prompts to the email address that they have on file for you. Ensure that the email address on file is one that you keep an eye on regularly, or else you will miss them. It is also an excellent idea for you to set reminders for your renewal filings and maintenance independently. You should make your filings whether or not you get them. When you can anticipate the reminders, the USPTO will email you on the initial day that you can file for your renewals.

What are the necessities to get a filing date?

• An address and name to which the correspondence will be send by the USPTO.
• The name of the applicant.
• For nontraditional marks and design, a plain sketch of the mark.
• The filing fee for a minimum one class of services or goods.
• A listing of the services and/or goods that are or will be sold or offered in relation with the mark.

What extra requirements must all applications meet to carry on to TrademarkRegistration Service?

• Details about the applicant:
• In case the applicant is not an individual, the kind of legal entity.
• Citizenship, or country or state of inclusion.
• The foundation for filing.
• A confirmed statement. The below-mentioned individuals may sign an application:

ü  An attorney who has an implied or actual written or verbal power of attorney from the candidate.

ü  An individual with legal authority to connect the applicant;

ü  A person with practical knowledge of the facts and implied or actual authority to act on behalf of the candidate;

• For marks apart from standard character word marks, a description of the mark.
• For marks apart from scent, sound, and other non-image marks, a sketch showing the mark required to be registered.
• When appropriate, an English transliteration or translation of any non-English vocabulary in the mark.
• Any not paid filing fees for extra classes. 

The USPTO motivates foreign applicants to select a domestic envoy to get service of process or notices.

Things To Do If Trademark Registration Gets Rejected Due To Merely Descriptive Mark

Your Trademark registration application may get rejected for several reasons. Close to the top of the list of possible trademark rejections is mere descriptiveness. Fair rivalry is the primary reason why descriptive marks are usually not registrable. The standard at work here is that competitors should be able to use specific words to sell their products. It would thus be unjust to give a trademark owner special rights to a descriptive mark which would hinder competition in the sale of definite services or goods.

Tips to avoid choosing a merely descriptive mark

Search the USPTO trademark database for applications filed for the similar mark. Pay specific attention to any trademark filings in your specific class of services or goods as a mark for one product may not be descriptive for a completely diverse product in a diverse class.

How hard is it to conquer a mere descriptiveness denial?

It is not simple to prevail over a mere descriptiveness rejection. Essentially, you have one shot to make your best quarrel. In case you do not influence the examining attorney in your response to a non-final Office Action, you have only some options remaining:

• Plea to the TTAB or Trademark Trial and Appeal Board or
• Based on new evidence file a Request for Reconsideration

The possibility of a flourishing petition over a mere descriptiveness denial is quite low.

Tips to dispute against a Section 2(e) rejection

If the mark has a minimum of two words, one possibly effective argument shows absurdity among the two words. Another approach is to show how the mark in fact does not communicate information about traits of the goods or services.

A mark will be denied as deceptively misdescriptive if

• the misrepresentation conveyed by the mark is plausible and
• the mark misdescribes an ingredient, quality, function, characteristic, purpose, feature, or use of the particular services or goods.

Appealing a Descriptiveness Refusal

A plea to a descriptiveness refusal can come as a reply to an Office Action, a Request for Reconsideration of a Final Office Action, or as a petition to the TTAB. A plea, particularly a petition to the TTAB, can be the most time-consuming and expensive way to act in response to a descriptiveness refusal, but, if winning, it has the maximum benefits. If a trademark owner is flourishing in overturning the descriptiveness refusal, it might get a listing on the main register as a unique trademark.

Usually, an Online Trademark Registration owner can select either of the other two options while its trademark application is still awaiting. Further along in the procedure, the more procedurally hard it can become to alter to the Supplemental Register or file proof of obtained uniqueness, but it can typically be done. If a trademark owner thinks that its trademark is not “merely” descriptive of its services and goods, it should strongly think about appealing the descriptiveness refusal.

There any several factors to consider when deciding the ideal way to deal with a descriptiveness refusal. If a TrademarkRegistration Service is actually descriptive, then offering evidence of acquired distinctiveness or amending to the supplemental might be the only way to gain any federal rights in the descriptive trademark.

Reasons For Trademark Application Rejections

Maximum trademark applications are not approved on their first go-around as per the USPTO trademark statistics. Only a few applications receive a “first action approval”. This means that Office Actions are published against the huge majority of trademark applications. While the reasons for Online Trademark Registration application rejections are several, they fall under two categories usually:

• Refusal of registration and
• Non-substantive problems

Non-substantive problems are quite straightforward and cheap to resolve, with the exemption of doubtful trademark provisions. Instances of non-substantive problems comprise requests for amendments or further information in regards to the following:

• identification of services and goods
• background on the connotation of the mark in a foreign language or in the industry
• explanation of the mark if a stylized logo is involved

Significantly more cost and effort will be necessary to overcome a substantive denial to get your trademark registered. Instances of substantive grounds for refusing a trademark application comprise:

• likelihood of confusion with a previous filed or registered trademark (i.e., your mark is too alike to someone else’s mark filed prior to your application);
• failure to point out function or source as a trademark 
• merely descriptive mark (i.e., your mark explains a feature, characteristic or quality of the goods or services recognized in your application); and

Tips to minimize or avoid trademark rejections

Prior to filing your Trademark registration application, know that certain pre-filing measures can decrease the risk of substantive and non-substantive denials significantly. Here are some tips.

If you are brainstorming, exclude those marks that seem descriptive or generic of your products. You should also sort out phrases or words that seem to offer only informational matter, and be deficient in the prospective to become a source identifying brand that will differentiate your company.

The identification of goods and services will necessitate careful contemplation. You wish to use depictions that not only match to USPTO trademark benchmarks, but would also reduce going beyond with the services/goods of any related registered marks.

One possibly serious error is recognizing several goods or services in a use-based application when, in fact, the applicant has not yet used the mark on all the products identified in the application. There is no offense in recognizing several goods/services in an Intent-To-Use application, but such a mistake in a use-based application can result in void registration if not rectified in time.

To lessen the hazard of a probability of perplexity rejection, a triumph search of the USPTO trademark file must be performed prior to filing your trademark application. Looking for the precise mark in the same class is quite simple, but searching for other marks that may be considered as confusingly similar necessitates some experience and skill.

Tips to respond to trademark application refusals successfully

In spite of planning in advance and cautiously staying away from drawbacks, you may get an Office Action. It might be of somewhat console, but it assists to remember that USPTO trademark examining legal representatives are not robots sticking to a steady formula or pattern. The challenge is to convince the human examiner that your Trademark Registration Service is permissible.

Common Benefits Of Trademark Registration

Filing a trademark application with the USPTO is a vital stride that organizations can take in safeguarding their business and their brand. A trademark which is registered federally presents advantages that offer the trademark owner several different benefits in utilizing and safeguarding it. Ahead of getting into those benefits, it is of utmost importance to take a quick look at few trademark basics.

Companies do not give money and question themselves to the trademark request process for no cause. Having a federal trademark registration provides a business with quite a few benefits that can assist them competitively and legally.

Top benefits of Trademarkregistration

• The proprietor of Registered Trademark experiences exclusive right over the trademark. The proprietor can use the same thing for all the products falling under the category applied. Besides this, the owner can enjoy the exclusive ownership of the Trademark and can stop other from the unlawful utilization of the Trademark below the similar category where it is registered. This gives the freedom to take legal action against the unlawful user of the Trademark Registered.
• After the trademark is registered you can use the ® symbol on your insignia indicating that it is a registered trademark and no person can use this trademark. It is extraordinary of all kinds of usages apart from rights. If an individual makes use of the trademark then you can also take legal action against the party in case the trademark is registered.
• Online Trademark Registration makes it simpler for customers to search for your products. It makes your product and uniqueness of products diverse from that of the existing competitors and acts as competent commercial tool. The symbol can converse your image, excellence, or distinctive trait of your company and any establishment.
• The set quality of your product and services are identified by everybody through the trademark and which establishes benevolence and reliance among the customers in market. It assists in creating lasting customers who are loyal and always choose for the same brand.
• Trademark Registration Service gives approval to the quality of the product. Clients connect the product’s quality with the brand name and this image is prepared in the market regarding the quality of a specific brand which aids in drawing the attention of potential customers as they can discriminate the excellence of a product by the logo/ brand name.
• No rival or other individual can use the logo registered by you under trademark. However, in any case one utilizes it devoid of the approval of the possessor of trademark or makes any misleading use of same, the owner can get the legal protection under the Act and stop the person doing so.

Before a firm can submit an application for a trademark, it should essentially carry out a trademark search by means of the USPTO database. If a company wishes to witness a trademark that you own already they will see it in a database search. This should save both of you some lawful bother.

Trademarks Registration Process In The United States

Trademark applicants usually want to know how much time it takes to get a trademark registered. The extent of the Trademark registration application procedure is based upon three key factors, each of which is controlled by a diverse party:

• Filing basis
• Rejections/Office Actions
• Oppositions

For a trademark application based on actual use in commerce or a foreign registration, the time from original filing to registration might take six to twelve months if there are no Office Action denials and no oppositions.

Filing Basis Decided by the Applicant

Among the above three factors, the filing basis is the one domain within the control of the applicant. The applicant can come to a decision whether to file the application based on actual use or an Intent-To-Use. Typically, use-based applications develop into registrations faster than ITU applications as the applicant has submitted the necessary proof of trademark usage upfront.

An ITU application, in contrast, offers the applicant with extra time to show usage of the Online TrademarkRegistration.  Assuming an ITU application is legitimate, an ITU applicant might have up to three years from the date of the Notice of Allowance to file a Statement of Use with apt specimens of trademark usage.

If you wish for the advantages of an ITU application without the setback, you do not have to wait for the Notice of Allowance to submit your proof of trademark usage. Rather, you can file an Amendment to Allege Use as soon as your product or service is suitably sold in link with the applied-for trademark so long as your application has not yet been approved for publication.

Owners of foreign registrations for the precise same mark can also comprise a foreign registration filing basis.

Oppositions Filed by Third Party Trademark Owners

Even if the review process of USPTO goes smoothly and your trademark is published promptly for opposition, you might still encounter opposition by a third party trademark owner who believes your mark should not be listed. At times, a potential opposer might file an extension of time to contest your application which can draw the procedure by a couple more months until they come to a decision whether or not to file a Notice of Opposition with the Trademark Trial and Appeal Board.

Time Required Registering a US Trademark

The fastest path to a Trademark Registration Service would be a mark depending on actual use or a foreign registration that does not come across any oppositions or Office Actions. Such a mark could establish into a registration within six to twelve months from the filing date.

The duration of the trademark application procedure may be postponed or extended because of a number of factors. The USPTO reviews trademark applications and determines whether an application meets the needs for federal registration. You can also set up rights in a mark based on lawful use of the mark. 

Remember that federal registration is not valid outside the United States. But, if you are a competent owner of a trademark application pending prior to the USPTO, or of a registration issued by the USPTO, you may look for registration in any of the countries that have joined the Madrid Protocol by filing a single application known as international application.

How USPTO Helps With Trademark Registration?

A trademark or service mark entails any name, word, device, symbol, or any combination, used or planned to be used to distinguish and identify the goods/services of one seller or provider, and to point out the source of the goods or services.

In the competitive and continuously changing digital marketplace, a trademark registration is a very precious asset. It distinguishes your business and the quality of your products from those of your opponents. Your trademark carries your repute with it, and strengthens long-term relations with your buyers. It is essential to be conscious of trademarks not only to safeguard your rights but also to make sure that you are not infringing on the rights of others when creating one.

The United States Patent and Trademark Office (USPTO) is in charge for enforcing and registering your rights as a mark holder. They are a resource you can access to ask questions, collect information, check the registry of present marks and start the registration procedure.

In the United States, you have the option to avail Trademark Registration Service at either the federal or state level. A state registered trademark only guards your mark from violation within that state. A federally registered trademark offers protection across the whole country, but is only available if you do business with other states or globally. In case your ecommerce platform provider can illustrate deals that span further than state borders, you can achieve the advantageous defence of a federally registered mark.

• State-registered

ü  Available when you do businesses within your state only.

ü  Safeguards your mark within state lines.

ü  Does not assist register in other states.

ü  Does not offer defence in other states.

• Federally-registered

ü  Safeguards your mark all through the U.S.

ü  Available when you do business with diverse states or globally.

ü  Offers an assumption of the mark's ownership.

There is no lawful necessity for you to register your trademark, but there are advantages for your brand if you do. Registering your mark offers you the special right to use it in either your state or the entire of the United States. In the event that someone does use your mark, it is simpler for you to take lawful action.

When you get Online Trademark Registration done, it is presumed to be your property. Having to establish ownership and use of an unregistered mark, but, can be hard and costly. A trademark is an asset to your business that is worth guarding, and registering your mark is the most excellent way to do that.

• Registered

ü  Put the ® symbol
near your mark

ü  Offers the presumption of the mark’s ownership, which makes court case simpler

ü  Mark is property that can be licensed or sold

• Unregistered

ü  Place the ™ symbol
after your mark

ü  Must show use on emails, website, packing slips and invoices

ü  In an argument, the first party to have used the mark will be thriving

When planning whether or not to trademark your brand, the primary thing to think about is whether your mark will be approved. The USPTO does not permit the registration of marks that are general, explanatory or likely to cause perplexity with active trademarks. 

Trademark Registration Types In The United States

USPTO or the United States Patent and Trademark Office is an agency in the United States Department of Commerce that assigns patents for varied inventions, and registration of trademark for product and intellectual reserves recognition. It inspects trademark requests and regulates if an application convenes the criterions of federal registration.

Types of trademark registration

A trademark is a design, sign, or expression which identifies products, sets up a brand name. It is used to compare specific goods or services over others. Even though, trademarks that are used to name services are typically called service marks. Trademarks are also said to defend logos and brand names, and keepers of small or big companies use them. A trademark can be owned individually, by a business organization or any other kind of lawful entity.

Types of Trademark Registration Service are mentioned below:

• Figurative marks or logos: They commonly consist of figures. Some slogan or words can also be included. Creating such a trademark offers you an outstanding chance to use some fonts you like.
• Wordmarks: Trademarks of this kind are made of one or more words. It also can be a blend of numbers or letters.
• Colors: If you want to submit an application for a trademark in the distinct color, you should state it in your application. Just give a short description. In case your trademark comprises more than one colors, a new application is necessary for each of them.
• Sound Trademarks: A sound can also be used as a distinctive indicator of your product. To safeguard it, you need to offer your application graphically. For instance notes can be used.
• Three-dimensional trademarks: When the real product or parts of its packaging has some strange shape, it is possible to guard these features as a three-dimensional trademark. For instance, it can be a perfume bottle.
• Collective, guarantee and control trademarks: These trademarks are not distinguished as a separate type; they can be a part of any kind of trademark.

How Online Trademark Registration works?

• Search

After the trademark is created, get assured that someone else does not have the same mark by checking the Trademark Electronic Search System database. Also, do not forget to find out if your trademark is can be registered or not.

• Mark Format

Define your mark format. State if it is a standard character mark, a design or stylized mark, a sound mark.

• Identification of Goods/Services

Do not forget to precisely identify the exact goods and services.

• Filing Basis

Before listing an application, you must understand what your "basis" for filing is.

Trademark Attorney

Find out if you require an assistance of a professional solicitor. It is recommended to address to a qualified legal representative who can promise that your mark will be entitled for registration. Such an authority will also look for the databases, arrange your applications, think about the upright international protection, and work with the suitable individual countries' trademark organization or trademark office. Without qualms, this choice will save your time and even avoid needless costs.