There are two ways to protect your trademark in the United States: the filing of a US Trademark Application or the designation of the United States through the international trademark registration.
Shall be registered as mark any word, name, symbol, device or any combination. The owner of the trademark may be an individual, corporation, partnership, LLC, or other type of legal entity.
Before filing the trademark application, it is important to have clear in mind whether the application must be based on actual and existing use of the mark in the United States or if there is a bona fide intention to use the mark in the future. In the latter, within six months after the Notice of Allowance it will be necessary to file the “Statement of Use” (the use of the mark in the United States, therefore, must be started and be demonstrable). In order to avoid the abandonment of the application, it is also possible to file a request of extension of time (of six months) for the filing of the Statement of Use. A total of five extension requests may be filed.
After the filing, the Examining Attorney makes a complete review of the mark, including a search for earlier conflicting marks.
If the Examiner finds some obstacles to the registration, an office action is issued. It is possible to reply to the office action within 6 months or the application will be declared abandoned.
In case the examining attorney issues a final refusal, the applicant may appeal to the Trademark Trial and Appeal Board (TTAB).
In the event no office action is issued by the Examining Attorney, or in case you have overcome the refusal, trademark application will be published in the Official Gazzette.
Third parties will have 30 days from the publication date to file an opposition to the registration or a request to extend the time to oppose.
The registration is valid as long as the applicant file all registration maintenance documents. In order to keep the registration alive, it is necessary to file a “declaration of use” (in which it is stated the mark is used in the United States) between the fifth and sixth year from the registration date. Later, between the ninth and tenth year from the registration date (and every 10 years thereafter) it will be necessary to file a combined “Declaration of Use and Application for renewal”.
Trademark registration is subject to cancellation in the event of non-use for three consecutive years.