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(3) Trademark Registration

 

Trademark Selection (1)

Trademark Search (2)

Trademark Registration (3)

Other Notes (4)

 

(A) Application for Registration

The registration process is initiated by filing an application with the Patent and Trademark Office. Registration on the Principal Federal Register provides nation-wide notice of your ownership of the mark, preventing competitors from later accruing ownership rights. Registration provides many important benefits, such as prima facie evidence of your ownership of the mark and the validity of the mark. Registration also allows the Registrant to sue in Federal Court to enforce your mark, and establishes your priority in foreign countries, most of whom grant rights based on first-to-file.

(B) Trademark Prosecution

Approximately 3-6 months after filing the application, you will receive an application number and filing date. Approximately five months after filing, the application will be examined by an attorney at the PTO and will either be accepted or rejected. There are multiple grounds for refusal, many of which can be overcome by argument or amendment. This prosecution stage may give rise to additional legal fees.

If you filed an "Intent to Use" application, you also must file proof of your use in commerce within 6 months following the receipt of a Notice of Allowance (although some extensions are available for a fee). The government requires a $100 filing fee with this filing.

(C) Trademark Maintenance

In order to maintain your Federal Trademark Registration, it must be renewed every ten (10) years. In addition, a one time affidavit of use must be filed after five years (and within six years) after the original issue date (under Section 8). You can file to have the mark made "incontestable" after five (5) years of continuous use in commerce (under section 15). The section 8 and 15 filing are generally made at the same time for economy.

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