Category: Trademark Protection

Enter the filing date of the application that is the basis for the priority claim. NOTE: In accordance with Article 4(c)(3) of the Paris Convention, where the last day of the six-month period from the claimed priority date is a day when the Office of origin is not open for the receipt of requests to present international applications, the six-month period will, where the international registration bears the date of the receipt by the Office of origin of the said request, be extended until the first following working day at the Office of origin; similarly, where the international registration bears the date of the receipt of the international application by the International Bureau (IB), or a subsequent date, and the last day of the six-month period is a day when the IB is not open to the public, the six-month period will be extended until the first following working day at the IB.

• USPTO website, Trademark Basics. For instructional videos, application processing timelines, frequently asked questions (FAQs), and other useful information.
• Trademark Assistance Center (TAC) TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199. For general trademark information and printed application forms
• Patent and Trademark Resource Centers (PTRCs) are a nationwide network of public, state, and academic libraries that disseminate patent and trademark information and support the diverse intellectual property needs of the public. The PTRCs have trained specialists who may answer specific questions regarding the trademark process, but they do not provide legal advice. More information on PTRCs, including a list of the PTRC(s) in your state, is available at the PTRC section of our website.

For current fees, see the Trademark Fee Information page or contact the Trademark Assistance Center (TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199). Fees almost always are based on the total number of International Classes that the USPTO assigns to your goods/services. For a listing of the International Classes, see the “International Schedule of Classes of Goods and Services”.

To maintain your trademark registration, you must file your first maintenance document between the 5th and 6th year after the registration date and other maintenance documents thereafter. Your registration certificate contains important information on maintaining your federal registration. If the documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated, making the filing of a brand new application to begin the overall process again necessary. Forms for filing the maintenance documents are at the TEAS forms page.

Throughout the life of the registration, you must police and enforce your rights. While the USPTO will prevent another pending application for a similar mark used on related goods or in connection with related services from proceeding to registration based on a finding of likelihood of confusion, the USPTO will not engage in any separate policing or enforcement activities.

Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the required fee(s) at the appropriate times, as identified below. The necessary documents for maintaining a trademark registration are

• Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration); and
• Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9 (combined §§8 and 9).

A §8 declaration is due before the end of the 6-year period after the registration date or within the 6-month grace period thereafter. Failure to file this declaration will result in the cancellation of the registration.

A combined §§8 and 9 must be filed before the end of every 10-year period after the registration date or within the 6-month grace period thereafter. Failure to make these required filings will result in cancellation and/or expiration of the registration.

For further information, including information regarding the special requirements that apply to Madrid Protocol registrations, use the Popular Link “Maintain or Renew Registrations” on the left side of the Trademarks Home page or contact the Trademark Assistance Center (TAC) (TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199).

If the NOA has not yet issued and the application has not yet been approved for publication, you may file an Amendment to Allege Use, which includes the same information as the SOU (see above). You may not file the Amendment to Allege Use during the “blackout period” after approval of the mark for publication and before issuance of the NOA. In that situation, you must wait until after the blackout period to file your SOU.

If a NOA has already issued, you establish use by filing a Statement of Use (SOU) form that contains a sworn statement that you are now using the mark in commerce on all the goods/ services. If you wish to file an SOU before the mark is in use in commerce on all listed goods/ services, you must delete or divide out the goods/services for which the mark is not in use. For more on division of an application, please see TMEP Sections 1110 et seq

The SOU must also include:

• A filing fee per class of goods or services;
• The date of first use of the mark anywhere and the date of first use of the mark in commerce;
• One specimen (or example) showing how you use the mark in commerce for each class of goods/services.

Once the USPTO issues the NOA, you have 6 months to file the SOU. The 6-month period runs from the issue date shown on the NOA, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the 6-month period, or the application will be declared abandoned, meaning that the application process has ended and your mark will not register. You may request 5 additional extensions for up to a total of 36 months from the NOA issue date, with a statement of your ongoing efforts to make use of the mark in commerce. A filing fee per class of goods or services must accompany each Extension Request. The form for filing the Extension Request is at . The date of the grant or denial of an Extension Request does not affect the deadline for filing the SOU or next Extension Request. The deadline is always calculated from the issue date of the NOA.

For current fees, see the Trademark Fee Information page or contact the Trademark Assistance Center (TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199).

If no opposition or extension of time to oppose is filed or you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a NOA about 8 weeks after publication.

A NOA indicates that your mark has been allowed, but does not mean that it has registered. As the next step to registration, within 6 months of the issue date of the NOA you must:

• Submit a “Statement of Use” if you filed based on intent to use (Section 1(b)) and are now using the mark in commerce;
• Begin using the mark in commerce and then submit a “Statement of Use;” or
• Submit a six-month “Request for an Extension of Time to File a Statement of Use” if you need additional time to begin using the mark in commerce.

Forms for filing both the Statement of Use and Extension of Time are at the TEAS Forms page.

If no opposition or extension of time to oppose is filed or if you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a registration certificate about 11 weeks after publication, if the application is based upon the actual use of the mark in commerce (Section 1(a)) or on a foreign or international registration (Section 44(e) or Section 66(a)).

After publication in the OG, there is a 30-day period in which the public may object to the registration of the mark by filing an opposition. An opposition is similar to a court proceeding, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. A third party who is considering filing an opposition may first file a request for an extension of time to file the opposition, which could delay further action on your application.

The next step after publication depends on your basis for filing the application:

If no refusals or additional requirements are identified or if all identified issues have been resolved, the examining attorney will approve the mark for publication in the Official Gazette (OG), a weekly online publication. The USPTO will send you a Notice of Publication stating the publication date.

If you have authorized e-mail communication, the USPTO will e-mail you a “Notification of ‘Notice of Publication’” approximately 3 weeks before the future publication date in the OG. On the actual publication date, you will receive a second e-mail, namely, “Official Gazette Publication Confirmation” with a link to the OG. If you have not authorized e-mail communication with the USPTO, the USPTO will mail you approximately 3 weeks before publication a paper “Notice of Publication” stating the publication date.