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Protecting your trademark with federal registration is one of the most crucial things you can do to safeguard your brand’s identity and your bottom line. But when you file a trademark application with the United States Patent and Trademark Office (USPTO), it’s essential to know that there are a number of requirements to which you must adhere. Importantly, you must provide a trademark filing basis. There are several filing bases to choose from and the statutory requirements for at least one must be filled to register your mark.
Understanding which trademark filing basis your application should be filed under can be complex. However, it is necessary to know what your options are to prevent delay or denial of your trademark application. There are four possible filing bases from which you can select, including the following:
It’s crucial to be aware that the trademark filing basis is separate and distinct from the registration basis — which is the legal basis upon which your mark can be registered. The USPTO recognizes two registration bases, including “use in commerce,” and a foreign registration basis. One or both of these bases is required before you can register your mark.
Regardless of which filing basis you choose, the requirements will have to be met before your trademark application can proceed and your mark can be registered. Each trademark filing basis has its own specific criteria that must be met. For most trademark owners in the United States, a mark will be filed under either the use in commerce basis or the intent to use basis.
For the use in commerce basis, the mark must have been used in commerce — and be in use in commerce as of the application filing date. You must provide the USPTO with the date of first use of your mark anywhere in connection with the goods or services, in addition to the date of first use in commerce. At least one specimen for each class demonstrating how the mark is used on the goods or for the services must be submitted, along with the statement: “The specimen was in use in commerce at least as early as the application filing date.” The USPTO also requests a verification in an affidavit attesting to the statement and the dates of use for the mark.
If you are registering under the intent-to-use basis, you must provide the USPTO with an affidavit stating that you have a bona fide intention to use the mark in commerce. You must also attest that you had a bona fide intention to use the mark in commerce as of the date the application was filed. Critically, while you can file an application based on intent-to-use, you cannot use this as the basis for your registration. Your application must ultimately be converted to one based on use in commerce before your mark can be federally registered.
In order to comply with the foreign registration basis requirements, you must provide the USPTO with a copy of your foreign registration along with an English translation and a listing of the goods or services. The foreign registration must be in force at the time the USPTO issues a registration based on the same foreign registration.
A trademark application can be amended to request a priority filing date based on a previously filed foreign application for the same mark. This can allow you to receive the benefit of having the earlier effective filing date for the USPTO application. To assert the foreign application basis, you must submit a timely claim of priority, information regarding the filed foreign application, and a listing of the goods or services.
Significantly, when using one of the foreign filing bases, the country of origin must be a party to a convention or treaty with the United States that extends reciprocal trademark registration rights to U.S. nationals. For both the foreign registration basis and foreign application basis, the USPTO also requires an affidavit which includes the following statement: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”
If you satisfy the criteria for more than one trademark filing basis, you can register under more than one. However, the USPTO does not permit trademark owners to assert both use in commerce and intent-to-use in commerce for the same goods or services. If you are asserting more than one filing basis in the same trademark application, you must clearly specify that you are claiming more than one basis and separately list each one — along with the applicable goods, services, and classes.
The process of filing a trademark application can be complicated and highly nuanced. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC provides a variety of trademark services to entrepreneurs in many industries nationwide. With an impressive track record of successfully registering more than 6,500 trademarks with the USPTO, we offer our clients high-quality legal services at reasonable rates. Contact us today to schedule a complimentary 15-minute consultation with a trademark attorney to learn more about how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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