USA

Trade Mark

Summary

A trademark application can be filed in the United States of America (USA) on one of the following four bases only:

· Use of the trademark in commerce in the USA.

· Bona fide intent to use the trademark in the USA.

· Home registration.

Home application with a convention priority claim.

Requirements for filing a trademark application in the USA are the following:

· If the applicant is a corporation, give the name and the title of the corporation officer who will sign the application.

· If the applicant is a partnership, give the names of all partnerships and name of the partner who will sign the application.

· If the applicant is an individual, give the name of his country and citizenship.

· Prints of the trademark (if other than a word mark).

· If the trademark has been used in commerce with the USA in connection with all the goods/services, give the following details: - Date of the first use of the trademark anywhere.

· Date of the first use of the trademark in commerce with the USA. - Four specimen labels showing the mark as used. For services, provide advertisements or sales brochures.

· If the application is to be filed on the basis of bona fide intent to use the trademark, state the fact. Actual use will be required before registration is granted.

· If the application is based on a home registration in the country of origin, a certified copy of the registration and an English translation are required. A statement of bona fide intention to use the mark is required as well.

If the application is based on home application with a claiming priority, a photocopy of the home application, or full details of the home application, and a certified copy of the resulting registration will be required before registration will be granted.

Trademark (for goods) must clearly show the name of a product on the product itself (pamphlet, Polaroid picture of product, product packaging, website advertising).

Service mark (for services) must clearly show the name of the company and current address (such as newspaper/yellow page advertising or website advertising. Business cards and letterhead are generally no longer acceptable).

Note: The USPTO does not accept samples bearing the following symbols: "TM", "SM."

Since the application form to be executed by the applicant varies according to the options mentioned above, the correct application form can be made available when the applicant declares the basis on which the application will be filed in the USA.

Once a mark has passed through the examination stage, it will be published for opposition in the US Official Gazette. A third party will have 30 days from the day of publication to, either file a Notice of Opposition against the mark, or request an extension of time to oppose. If a Notice of Opposition is filed, there will be further charges for our services rendered in defending the opposition, the extent of which cannot be estimated in advance.

Time Scale:
Currently, it is taking the USPTO approximately 16-20 months to move a mark through the normal process, uncontested.

The Registration Process:
The dates below are approximate

· In 3-4 weeks the USPTO sends back your self-addressed stamped post card with the serial number and filing date on it.

· In 7-15 weeks the USPTO sends back a filing certificate.

· In 12-16 weeks the application is assigned to an examining attorney.

· In 16-25 weeks the application is reviewed by the examiner, with two possible outcomes: a) The examiner generates an "Office Action" - is requesting confirmation or clarification to an application - is refusing registration (not always a "Final Refusal") b) The examiner approves the application to continue onto the next phase.

· In 6-12 months the application is approved to be "Published for Opposition"

· In 9-15 months the application is published in the "Official Gazette" - The opposition phase lasts for 30 days (or 60 days if Opposition is filed)

· If Opposition is filed, the mark is halted in the process and the services of a competent legal and/or financial advisor will be required (if the owner wishes to fight the opposition).

· If NO opposition is encountered, then the mark is approved for registration. It is now anywhere from 11-20 months after you initially filed your registration application.

In 11-20 months the Registration Certificate is mailed to the trademark owner. \

Note: These dates are estimates, of course, based on our many years of experience and may differ from the official time frame provided by the USPTO.

Period of Protection
Section 8 needs to be filed between the 5th & 6th year (after registration has been granted), and then a renewal has to be filed again before the 10th year, after that it is every 10 years.

An application form (may be executed by the attorney on behalf of the applicant).

Patents