In order to obtain federal registration for your trademark, you must file your trademark application with the national trademark office in your country. IP Procure routinely files trademark applications with the US Patent And Trademark Office. An exemplary list of some of the published, allowed and registered trademarks filed through IP Procure is given here.
Anyone or any company can register their trademark with the US trademark office as long as the same or confusingly similar mark is not previously registered under the same or similar class of goods or services. After the U.S.PTO examiner allows the trademark, the mark is published for opposition in the Trademark Official Gazette. If no opposition is received buy the U.S.PTO within 30 days from the date of publication, the trademark is registered on the Principal or Supplemental Register as the case may be.
Registration of trademarks is currently on the increase and almost all trademark owners are choosing to register their trademarks with the U.S.PTO. According to the Accountability and Performance report of the U.S.PTO, 394,368 trademark applications were filed for registration in the year 2007. For more information on the benefits of registration see “Growing Trend of Trademark Registration“.
Once the mark is registered, IP Procure continues to update your trademark docket, maintain your registration and takes care of all post registration obligations. Clients are informed of upcoming deadlines to avoid abandonment of the application and timely file all post registration forms.
For details on maintaining a trademark registration please click here
Right to sue and recover damages
A trademark registration gives the owner of a trademark the right to bring a suit against an infringer in the Federal Court for trademark infringement. The owner has the right to recover damages, profits, court costs and attorneys’ fees in such an action. Criminal penalties may also be imposed upon those that counterfeit a registered trademark. This penalty may extend upto $250,000 or five years for the first offence, $1,000,000 or fifteen years in prison for the second or subsequent offence.
A federal registration of a trademark acts as constructive notice to everyone that the owner is using the mark as a trademark. Registration of a trademark is an official notice that the trademark owner owns the mark.
Priority of your mark
Federal Registration gives the trademark owner the right to use the mark and prevent anyone else from using the mark in the entire country. Although the owner maybe using his mark in one or two states, federal registration extends this protection to the entire country.
Registration of a trademark allows tax benefits for both Federal income tax purposes and state tax purposes such as service taxes.
Asset and Sale
A registered trademark acts as a quantifiable asset that can be sold, licensed, mortgaged or transferred.
Registration of a trademark allows the owner to register the mark with the US customs office, thereby preventing importation of goods that bear an infringing mark.
A registered trademark acts as conclusive evidence of the validity of the mark. This means that in a court case, the owner does not need to waste time proving the ownership and exclusive right to the mark. Registration is also conclusive evidence of the owner’s right to use the mark in commerce.
5 Year Registration
Once the mark has been registered for five years, the mark is considered a strong mark and the grounds for attacking the registration are limited.
For details on trademark maintenance, keep reading this section or if you have any specific enquiry, contact our trademark attorney Ash Tankha here.
Registration of a mark does not automatically grant continued protection. It is necessary to file certain documents attesting to the constant use of the mark in order to claim continued protection.
I. Section 8 Affidavit
The United States Patent And Trademark Office requires the filing of a Section 8 affidavit between the fifth and sixth year after issuance of registration of a trademark or within the 6 month grace period after the expiry of the deadline with an additional fee of $100. The Act further provides that failure to file the affidavit within the fifth and sixth year of registration of a mark or within the six month grace period will result in the registration being cancelled.
The affidavit is basically an affirmation that the mark is still in use in commerce. ”Use in Commerce” is defined by the Trademark Revision Act of 1988 as ”bonafide use of the mark in the ordinary course of trade and not made merely to reserve a right in a mark.” If the mark is not in use in commerce, the affidavit must explain the reason for the non-use and state that the non-use is not the result of an intention to abandon the mark. Non use is excusable only if it is caused by factors beyond the registrant’s control. It must be noted that excusable non-use of a registered mark does not include absence of sales due to lack of demand of the product.
The 1988 Act provides that a Section 8 Affidavit must include the same information required for a renewal of a mark, that is, a statement of use in commerce as to at least some of the goods and services described in the registration and the submissions of specimens evidencing such use (15 U.S.C §1058 a). This refers to the condition that the affidavit must be accompanied by a specimen of the mark showing current use of the mark on the goods or services covered by the registration. A specimen is required to be submitted for each class of goods or services protected by the registration. Further, the specimens submitted must also conform to the requirements of acceptable specimens when filing a new application of a mark, such as the acceptable pixel and resolution count, etc.
It is important to remember that false statements made in a Section 8 Affidavit constitute fraud and this could lead to cancellation of the registration. Therefore, the specimen filed must be one that is in fact used in commerce and not created only for the sake of filing the affidavit within the deadline but in actuality has never been used on the goods and services.
A list of documents to be submitted accompanying a Section 8 Affidavit is as follows:
Identification of the registration, including mark, registration number and date.
Recitation of use in commerce of at least some of the goods covered by the registration, or recitation of the circumstances excusing non use and absence of the intention to abandon.
Recitation of Ownership of the Affiant.
A specimen showing current use in commerce of the mark on a product /service covered by the registration
Statements made in the Affidavit or Declaration Form
Filing fee of $100 per class.
If filed after the sixth year but within the six month grace period, an additional fee of $100 per class must be paid.
IP Procure undertakes the responsibility to file the Section 8 Affidavit on behalf of its clients on receipt of the acceptable specimen and filing fee amount.
II. Section 15 – Affidavit of Incontestability
Once an application is registered, it can no longer be cancelled on the grounds of prior use or descriptiveness. However, filing an affidavit of incontestability grants an ”incontestable” status to the registrant. This means that the registration becomes conclusive evidence of the registrant’s ownership and exclusive right to use the mark and grants immunity to the mark from attacks on the basis of descriptiveness.
IP Procure continually files Section 15 Affidavits along with a Section 8 Affidavit on behalf of its clients.
The requirements for a Section 15 Affidavit to be filed are:
Identification of the registration, including mark, registration number and date.
Claim of ownership
Statement of those goods or services on which the mark has been continually used in commerce for a period of 5 consecutive years after the registration of the mark.
Filing of the Section 15 Affidavit within one year of completion of the five consecutive year periods.
Absence of any final decisions adverse to the Registrant’s claim of ownership or right to register or any other pending proceedings involving these rights.
Statements made in the Affidavit or Declaration Form.
A filing fee of $200 (subject to change by U.S.PTO) per class.
It is important to note that if the mark has been used in only some goods or services covered in the registration, then only those goods and services must be specified in the statement of continuous use.
Once a mark has been registered, this registration needs to be renewed every ten years after the date of registration. In order to renew the registration, the following documents need to be filed with the United States Patent and Trademark Office:
A statement of continued use, also known as a 10 year Section 8 Affidavit mentioning the goods or services used in connection with the mark as covered in the registration.
Showing the non use of the mark and the non use is not due to any intention to abandon the mark. The same requirements that pertain to a Section 8 Affidavit with regard to non use of a mark apply in this situation as well.
Specimen for each class of goods or services covered by the registration.
Filing fee of $400 (subject to change by U.S.PTO) per class for the application of renewal.
If the owner of the mark believes that there has been a material alteration to the mark over the 10 year period, he has the option to make a formal application to amend the mark in the registration under Section 7(e). However, this is not mandatory if no material change has been made.
Also, if the mark is no longer used on certain goods or services covered in the registration, these goods and services must be deleted on filing the statement of use affidavits and renewals. However, if the mark is used on additional goods or services, the registration cannot be amended to add these goods and services, although a new application may be filed for the same in order to update the owner’s product.