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Registering your trademark in the U.S. GISELLE AYALA – LEGAL FOCUS

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Filing

Overview of the process

• Fee • Verified Statement • Specimens of the mark

Examination

Publication

• Passed to the examiner in charge • Preliminary review

• Official Gazette of the PTO

Opposition? REGISTRATION

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• Any person • No?

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1. FILING

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Trademarks may NOT

Contain immoral, deceptive, scandalous, misleading words or signs…

Contain flags, national symbols or insignias.

Contain marks which resemble other marks already registered.

FILING YOUR TRADEMARK APPLICANTION GISELLE AYALA - LEGAL FOCUS

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THE USPTO MAY NOT REGISTER

Descriptive

TRADEMARKS

Generic

Functional for a product or service

THAT ARE

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What shall the application include?

Information you must provide when filling your application

1. The specification of the applicant’s domicile and citizenship. 2. The date of the applicant’s first use of the mark in commerce. 3. The goods in connection with which the mark is used. 4. A drawing of the mark.

What shall the verified statement contain? 1. The verification believes that she or the juristic person in whose behalf she makes the verification, is the owner of the mark to be registered. 2. To the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form or in such near resemblance as to cause confusion, or to cause mistake, or to deceive. GISELLE AYALA - LEGAL FOCUS

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Advertising and marketing materials are generally unacceptable specimens for goods.

What is use in commerce? AS OF THE APPLICATION FILING DATE!

Product

• Sold or shipped • Within the United States • In the ordinary course of trade

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And the mark? It must be displayed • On the product itself • On external materials such packaging, tags and labels. • On a point-of-sale or brochure.

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What is use in commerce? AS OF THE APPLICATION FILING DATE!

Services

• Provided • Within the United States • In the ordinary course of trade

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And the mark? It must be displayed In advertising and marketing materials displaying the mark and referencing the services identified in the application

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ď‚– The USPTO expects from the applicant to show current examples of how the mark is used in the sale of the specific products and/or services identified in the trademark application.

Services

Goods

What are specimens?

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What happens if you cannot prove use in commerce?

File an intent to use application

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To get an earlier filing date even though you haven’t launched the product or made any sales

The USPTO will not use later-filed applications for similar marks to block your application.

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2. EXAMINATION

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Once filed, the trademark application is assigned to an examiner

Appears it would be entitled to registration?

It appears the applicant is found not entitled to registration.

Publication

6 moths to amend or reply

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If the USPTO issues letter if the examining attorney finds grounds for refusing to register your trademark. No submission. Abandonment.

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Submit a timely and complete response.

USPTO issues final letter (office action). If your response does not overcome all refusals and/or satisfy all requirements

Appeal

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USPTO approves trademark and publishes it for opposition.

No appeal

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USPTO issues final letter (office action). If your response does not overcome all refusals and/or satisfy all requirements

Appeal USPTO approves trademark and publishes it for opposition.

REJECTED. Notice of Appeal with the Trademark Trial and Appeal Board (TTAB) GISELLE AYALA - LEGAL FOCUS

No appeal

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3. PUBLICATION

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ONCE A TRADEMARK APPLICATION HAS BEEN PUBLISHED

3RD PARTIES HAVE 30 DAYS TO MAKE OPPOSITIONS

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A panel of administrative judges review and decides.

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4. OPPOSITIONS

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What happens if no oppositions are filed?

ï‚–USPTO issues Notice of Allowance (NOA)

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What happens if no oppositions are filed?

You must file a Statemen of Use

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What is a Statement of Use?

Without filing the Statement of Use, your trademark application cannot be finalized and approved.

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File through the Trademark Electronic Application System,

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5. REGISTRATION

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.

ď‚–If the USPTO examining attorney does not find grounds for refusal, and your application meets all legal requirements, your Statement of Use will be approved and your trademark will be registered!

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FINAL THOUGHT .

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You must periodically file maintenance documents and fees within specific time frames to keep the registration active.

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THANKS FOR YOUR ATTENTION

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Profile for Legal Focus

REGISTERING YOUR TRADEMARK IN THE US  

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