Federal Trademark Applications – Applications for United States Trademark Registration

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Federal Trademark Applications – Applications for United States Trademark Registration

Santucci Priore, P.L. charges a mutually-agreed, one-time, flat fee for the preparation and filing of applications for United States Trademark Registration with the United States Patent and Trademark Office (“USPTO”) which includes the governmental filing fees from the initial filing through the issuance of a Certificate of Registration.  With Intent-To-Use Applications under Section 1(b) of the Trademark Act, there are unavoidable additional fees due prior to the Issuance of a Certificate of Registration.  However, we do not request these additional fees until the USPTO requires them to be paid.  There are no surprised with Santucci Priore, P.L. when filing trademark applications.  In advance of any commitment, an exact flat fee will be quoted to you before you make your decision to file a new application. Our flat fees also cover any questions you may have during the search phase and during the drafting and filing of the initial application. Keep in mind that the fee does not cover any litigation issues such as oppositions, cancellations or infringement matters, or any refusals to register, amendments, affidavits, or declarations which the Trademark Office might in some circumstances require.

The trademark application process can, in some circumstances be very lengthy. In fact, some trademark applications remain pending for numerous years before becoming registered.  There are various reasons for this delay.  However, it is mostly due to the amount of applications filed within the USPTO each year.  Despite the above, it is our experience that the application process takes an average of a nine months to a year-and-a-half before a mark becomes registered and a Certificate of Registration is issued.  However, there is never any fixed period for this process.  Also, keep in mind that, in the United States, trademark rights stem from “use” of the mark in commerce, and and not from the registration of the mark.  Once you file an application, or use your mark in United States commerce, you have preserved your rights, regardless of the amount of time the government takes to approve your application.  Nonetheless, registrations afford numerous statutory rights as well.

Filing an application

Although you can file an application prior to using a trademark or service mark, it cannot be registered until it is actually used in United States commerce. Depending on whether your mark is in use at the time of filing of an application, there are several general types of applications Santucci Priore, P.L. can file

“Actual Use” Application under Section 1(a):
Initially requires an application, filing fee, date of first use in United States commerce, and an example (or “specimen”) of use of the mark in United States Commerce.

“Intent-to-Use” Application under 1(b):
Initially requires an application, initial filing fee and later, after the application is fully-examined and approved by the USPTO, an example of use in United States commerce, a date of first use in such commerce, an additional filing fee and a Statement of Use.  Use in United States commerce is not required prior to filing the initial application.

Application Based on an Application Pending in a Foreign Country Under Section 44(d):
Initially requires an application, filing fee and copy of a pending application for trademark registration from a country other than that United States which was filed less than six (6) months prior to the filing of the application in the United States.  Use in United States commerce is not required prior to filing the initial application.  The applicant must be the same party that owns the foreign registration.  The mark must be the same as that which is shown in the foreign registration and the goods or services must be substantially the same, and certainly no broader.  The applicant must be a resident of a country other than the United States.

Application Based on a Foreign Registration Under Section 44(e):  Initially requires an application, filing fee and copy of a trademark registration from a country other than that United States.  Use in United States commerce is not required prior to filing the initial application.  The applicant must be the same party that owns the foreign registration.  The mark must be the same as that which is shown in the foreign registration and the goods or services must be substantially the same, and certainly no broader. The applicant must be a resident of a country other than the United States.

Applications to Extend Protection to the United States under Section 66:
Requires the prior filing of an international trademark application with the World Intellectual Property Association (“WIPO”) and filing fee. Use in United States commerce is not required prior to filing the initial application.  The mark must be the same as that which is shown in the foreign registration and the goods or services must be substantially the same, and certainly no broader.

Examination

Once an application has been filed, it is then pending examination. In approximately 2-3 months, the application is assigned to a USPTO Examining Attorney for review, who may challenge or refuse registration of your mark on a myriad of bases. A trademark application cannot mature into a registration unless all legal requirements are met, and many applications never satisfy these requirements and therefore never register. The USPTO communicates all such challenges, refusals, or requirements through official “Office Actions” which, when we are retained to file an application, are sent directly to Santucci Priore, P.L.

Publication

Upon conclusion of the examination of the application, and if/when the application is approved for publication, the USPTO issues a Notice of Publication advising that your Application for United States Trademark Application is being published by the USPTO for potential opposition by third parties. The opposition period runs for thirty (30) days from the publication date. Any person or entity, who believes that (s)he would be damaged by the registration of your mark, may file a Notice of Opposition with the USPTO’s Trademark Trial and Appeal Board within the 30-day opposition period, stating the grounds therefor. If no third party opposes your application within the 30-day opposition period, the application process proceeds, and absent unusual circumstances, a Certificate of Registration is issued by the USPTO several weeks later.

Registration

Once your federal trademark application is allowed and registered, you will be entitled to, and should begin using, the ® symbol to the upper or lower right of the trademark wherever it appears.  (For services: in advertising, on business cards, menus, signs, etc.; for products: on labels, packaging, displays, etc.) A Certificate of Registration on the Principal Register is a powerful and compelling piece of evidence which can be used in any federal, state or administrative court and many foreign courts to enforce your trademark rights including, but not limited to, obtaining injunctive relief, recovery for damages and attorneys’ fees. The certificate is considered prima facie evidence that: 1) the mark is valid and protectable; and 2) that you/your company are the owner of the mark for the recited goods/services.

Maintenance and Renewals – Future Government Fees

Federal trademark registrations are required to be periodically maintained and renewed.  Between the fifth (5th) and sixth (6th) year after the dated of registration (i.e., date the Certificate of Registration issues), a maintenance affidavit and additional USPTO filing fee is required to be paid.  Although the USPTO does permit a short grace period, if the filing and payment are not timely, the registration will be deemed abandoned and lost forever.  Renewal documents and fees are also required in the tenth (10th) year and again in the twentieth (20th) year following registration.

Santucci Priore can docket these deadlines for you, inform you well in advance of the deadlines, and prepare and file all documents and make the required payments for you, at your request, and for a small additional, mutually-agreeable, flat fee.

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