If you have not started using your trademark, you may file an application with the U.S. Patent and Trademark Office based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. A "Statement of Use" must be filed to prove the mark is being used in interstate commerce. This is a requirement before a trademark can be registered. The U.S. Patent and Trademark Office fee to file a Statement of Use is $100 for each class of goods or services in the application. A total of five extensions, each lasting six months in duration, may be granted by the U.S. Patent and Trademark office before proof of use in interstate commerce is required. Note that each extension incurs additional filing fees.
Not all trademark applications go smoothly. If the U.S. Patent and Trademark Office has any concern with your application, they will issue a notice known as an Office Action. Some are a request for clarification or additional information. Some represent a denial of your application. The U.S. Patent and Trademark Office deadline to respond to an Office Action is six months from the date of issue. If you do not respond to an Office Action, your application will be deemed abandoned.
If your trademark has been rejected by the U.S. Patent and Trademark Office, we can help you to overcome the objection. We respond to Office Actions from the U.S. Patent and Trademark Office as a part of our flat-fee trademark application process. Should you need our firm to respond to a substantive Office Action, such as a likelihood of confusion refusal, we will review your notice, discuss your options with you, and work to resolve the refusal.
We can help you obtain trademark protection for your mark throughout the world by working through international trademark treaties or with trademark practitioners in other countries.
Getting the trademark registration is the start of your brand protection process, not the end. To maintain your federal trademark registration, a Declaration of (Continued) Use must be periodically filed with the U.S. Patent and Trademark Office. A Declaration of Use is a sworn statement that your mark is in use in commerce. It must be filed between the 5th and 6th years after the date of registration. A federal trademark registration is effective for 10 years from the date of registration. A renewal will extend the federal registration for an additional 10 years from the date of expiration. The U.S. Patent and Trademark Office does not remind trademark holders of the need to make maintenance or renewal filings. We can docket the deadlines in our firm’s docketing system and contact you six months before each deadline.
A federal Declaration of Incontestability is not required to maintain registration of your federal trademark or service mark, but it will help deflect legal challenges as to your mark’s validity.
One of the most important decisions you can make is if you are going to protect your trademark against third parties. Every trademark owner should have a plan in place to deal with copycats, infringers, counterfeiters, and any other third party that may damage your trademark. We can assist you with developing an effective trademark enforcement plan for your budget.
A trademark license agreement enables you to expand your brand and increase your intellectual property revenue. We can draft your license agreement or negotiate the agreement terms on your behalf. A well-written and favorably negotiated trademark license agreement is essential to achieve the full value of your intellectual property.