A Power of Attorney, POA in short, is a legal document that authorizes an entity to represent or act for another person, usually, in the managing of the person’s property, business or private affairs. The former is called the Attorney or Agent whereas the latter is commonly known as the Principal.
In Trademarks, a Power of Attorney is required to appoint an Attorney on your file so he/she can represent you before the respective Trademarks Office.
Having said that, in many countries including the US, UK, Europe, Canada and Australia you don’t need to sign a POA for a standard trademark application (power of attorney is already implied when you entrusted your attorney/agent trademark registration). However, there are countries, such as, China, Mexico, Russia and India where a POA signed by the owner or any other person legally bound to the owner is required in order to file a trademark application.
In the US, when an applicant wishes to replace its existing attorney and appoint a new attorney, it needs to sign a Power of Attorney authorizing the new attorney to prosecute the trademark application.
To open in a new tab, click: What is a power of attorney? When do I need to sign a power of attorney?
Especially with US trademarks, we usually recommend to file your trademark in a single class. Why?
- It's less expensive. Remember - government fees are paid per class. Government fees are paid during filing and then more fees may be paid if a Statement of use needs to be filed.
- Single class applications are easier and faster to register. Since USPTO does a trademark search during the examination of your trademark, your mark may be found to be confusingly similar to any other marks. Therefore, the more classes you include, the more potentially close marks USPTO may find. For example, if an office action (aka objection) issues for a four-class application, registration of a whole trademark application may be significantly delayed even if the trademark owner is trying to overcome an objection for one class and the other three classes are acceptable and registrable.
- We also found from experience that USPTO favors single-class trademark applications and examines them quicker. It is easier to prove use for a single class rather than for multiple-classes.
- Since Statement of Use filing is mandatory before registration, filing in a single class will usually allow you to file Statement of use quicker, since it's easier to launch one product rather than five.
- The more classes your application includes, i.e. the broader you file - the higher the risk of an opposition is. For example, a trademark that is filed for "note-pads; diaries" is going to be less problematic than a trademark filed for "note-pads", "clothing", "toys" and "kitchen utensils".
- You have to submit proof of use 6 years after registration and then at every renewal. So for multi-class registrations, it can become quite an undertaking and the risk is higher that the registrant will be tempted to renew a trademark registration for products that are no longer sold, therefore, jeopardizing the whole registration.
To open in a new tab, click: Why should I file my US trademark application in a single class?
Since August 2019, all foreign applicants must be represented by a local US trademark attorney. What does it mean for you?
If you are not a US resident or if the applicant is a foreign company, you now need to appoint a US trademark attorney to file your trademark application.
If your trademark application was filed before August 2019, and there are some outstanding issues that must be addressed and USPTO sent you a letter after August 2019, you will be required to appoint a US trademark attorney when a response is filed.
Trademark Angel provides proper legal representation through a designated US trademark attorney.
To open in a new tab, click: Can I file my US trademark myself? Do I need a US attorney to file a US trademark application?
Before you file your trademark application in the US, please review the points below to see when filing is not recommended.
- If you do not plan to sell your products under your trademark, please do not file your trademark in the US as proof of use of your trademark will be required before registration.
- Generic trademarks are not registrable. Please consider adding unique elements before filing such a trademark.
- Trademarks or slogans that are informational only are not registrable. For example: ONCE A MARINE, ALWAYS A MARINE and BLACK LIVES MATTER are not registrable.
- If a very thorough trademark search was not done, please save your money and don’t file. US is one of the most difficult jurisdictions to achieve trademark registration, so filing without a proper is the same as playing a lottery and hoping to win.
- If you are aware of a similar trademark or trademark search uncovered a potential obstacle, please do not file the original trademark but consider making some tweaks to make it more registrable.
- If you have not come up with an exact list of products that you are going to sell under your brand, but simply trying to get in the Brand Registry, please consider filing in a quicker country, like UK, Germany or EU. If you file for the wrong products or change products mid-registration, you will not be able to complete your registration since we will be unable to file proper Statement of use.
- If you only need a trademark for Amazon Brand Registry purposes, and nothing else. In this case, consider doing a fast-track trademark application in Germany, UK or EU.
- US trademarks are quite expensive since government fees are high and are paid per class. Additional fees are also possible if Statement of use needs to be filed. If you don’t have adequate budget, consider filing your US trademark application in a single class or don’t file at all.
- If you are a very local business and don't have sales to another state (local restaurant or hair-dressing business) please don't file a Federal trademark application. Instead consider filing a trademark application your State.
To open in a new tab, click: When should I not file my trademark in the US?
There are 3 ways how you can proceed:
- Book an initial phone call with us. Here is the link for the trademark package
- Ask for a free preliminary trademark search to get an idea of whether your trademark can be registered. This is a basic search but if your mark is unregistrable, we'll be able to tell you. Order your search here.
- Buy a trademark package right away to start the trademark registration process without further delay. You can see our pricing on this page and can buy directly from our website.
What happens after I buy a trademark package?
- We'll confirm your order.
- We'll check if your trademark is registrable. A comprehensive trademark search will be done at this stage. We will provide detailed recommendations on how to increase the chances of achieving registration if your trademark turns out to be problematic.
- If your trademark is registrable, we'll move forward with the trademark registration process.
- If your trademark has low chances of achieving registration, you will have 3 options:
- Ask for a full refund;
- Come up with a different name. We will provide detailed instructions for this. Further trademark searches are included in the package and there is no extra cost. We'll keep searching until we find a registrable trademark;
- Proceed with the filing anyway.
The choice is yours. Make the first step now.
To open in a new tab, click: How does the process work with Trademark Angel? What happens after I buy a trademark package?
As of August 3, 2019, the United States Patent and Trademark (USPTO) now requires foreign domiciled applicants (read: non-US applicants) and registrants to appoint a US attorney on all US trademark filings and representations before TTAB. We work with a few trusted US attorneys so can file and take over your recently filed trademark applications. If you filed yourself, we can take over your application and appoint a US licensed attorney, at no cost to you.
Since this is how we always filed, our fees remained the same unlike many other firms that increased their fees following the introduction of this new rule.
In every country where we file, a licensed attorney or trademark agents submits your trademark application so that you get proper legal representation.
To open in a new tab, click: Who will file my trademark application?
Geographically descriptive trademarks are generally not registrable on the Principal Register in the US.
The USPTO attorney will use the following test to determine if a trademark is geographically descriptive:
- The trademark is the name of a geographic location
- The products or services come from the placed identified by the trademark or are made in the pace named in the trademark
- Potential customer would be likely to believe that the products or services originate in the geographic place identified in the mark
However if the place is not known or very remote, the public is unlikely to make this association.
Tip: If your trademark is geographically descriptive, and you cannot change or add another word to make it not descriptive as a whole there is one trick you can do. In order to reduce the risk of getting an objection from the Trademarks Office it's best to file a trademark that may be considered geographically descriptive as a combined logo (Meaning word mark plus an image).
For example, NOOGA OUTDOORS was considered to be unregistrable on the ground that “NOOGA” is a commonly used nickname for Chattanooga, Tennessee and the term “OUTDOORS” does not diminish the mark’s primary geographic significance. However, the same trademark didn’t receive a geographically descriptive objection when it was filed a combined logo: 
because as a whole it was no longer just geographically descriptive as it also contained other graphic elements (mountains, dumb-bell and circle).
Likewise, MICHIGAN BRAIN HEALTH for medical clinic services would be considered geographically and overall descriptive but 
would be registrable on the Principal Register (with a disclaimer of “Michigan Brain Health”).
A trademark that will most likely be refused by the USPTO as being geographically descriptive and therefore not registrable on the Principal Register (and not eligible for Amazon Brand Registry) may go through in the UK.
We can help you to identify if your mark would be considered geographically descriptive and will help to make suggestions how to avoid this refusal.
To open in a new tab, click: What are geographically descriptive trademarks in the US?
Trademark Classes
Every trademark application must list the specific goods and services that the trademark will cover.
Products belong to trademark classes 1 to 34. Services belong to classes 35 to 45.
Products are tangible, you can touch them. Services are intangible.
Below is a rough classification (class headings) just to give you an idea of general categories (please note that the below list cannot be used for trademark filing)
Products
Class 1: Chemicals (including those used in agriculture, industry and science)
Class 2: Paints, coatings, varnishes, colorants for food.
Class 3: Cosmetics, creams and serums, cleaning products including soap and shampoo, bleaching and abrasives, non-medicated toiletry preparations, false eyelashes, essential oil, perfume
Class 4: Fuels, industrial oils, greases, lubricants, candles
Class 5: Pharmaceutical and veterinary products, food supplements and vitamins, baby food, disinfectants, fungicides, herbicides, plasters, dental wax
Class 6: Metals, metal castings, metal hardware, metal containers, locks, safes
Class 7: Machines and machine tools and their parts, motors and engines (except for land vehicles)
Class 8: Hand-operated tools and implements, razors, cutlery
Class 9: Computers, computer hardware, computer cables, cell phones and cell phone cases, data carriers, computer software, downloable publications including e-books, videos and podcasts
Class 10: Medical and dental instruments and apparatus, massage apparatus, sex toys
Class 11: Products for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including lamps and kettles
Class 12: Land, air and nautical vehicles, motors and engines for land vehicles
Class 13: Firearms, ammunition, explosives, fireworks, holsters
Class 14: Precious metals, watches, jewellery
Class 15: Musical instruments
Class 16: Paper, items made of paper, stationery products, artists’ products, printed products including photographs, stickers, notebooks, party ornaments of paper
Class 17: Rubber, asbestos and plastic Items, pipes and tubes
Class 18: Leather and leather goods, bags, wallets, animal apparel, collars and leashes for animals
Class 19: Building and construction materials (non-metallic), non-metal monuments
Class 20: Furniture, mirrors, picture frames, storage containers not of metal, party ornaments of plastic
Class 21: Kitchen utensils, crockery, containers, cleaning implements, toothbrushes
Class 22: Ropes and strings, tents, nets, awnings, sacks, padding, canvas material and raw fibrous textile material
Class 23: Yarns, threads
Class 24: Textiles, fabrics, blankets, covers, towels
Class 25: Clothing, footwear and headgear
Class 26: Sewing products, lace and embroidery, artificial flowers, hair decorations like ribbons, false hair
Class 27: Carpets, linoleum, wall and floor coverings, wall hangings
Class 28: Sports equipment, video game apparatus, games, toys, Christmas decorations
Class 29: Dairy products, meat and fish, processed and preserved foods, including dried, frozen and cooked fruits and vegetables, milk, eggs, edible oils and fats, jamps, jellies
Class 30: Staple foods, spices, bakery products, confectioneries, tea, coffee
Class 31: Fresh fruit and vegetables, live animals, animal food, seeds, fresh herbs, plants and flowers
Class 32: Non-alcoholic beverages, preparations for making beverages, fruit juices, beer
Class 33: Alcoholic beverages, except beer
Class 34: Tobacco products and smokers’ articles, matches, electronic cigarettes
Services
Class 35: Retail services including online retail store, advertising, business consulting, business management
Class 36: Insurance and financial services, real estate services
Class 37: Building construction, repair and maintenance services, installation services
Class 38: Telecommunication services, broadcasting services including video broadcasting
Class 39: Transport, logistics and storage, travel services
Class 40: Treatment of materials, custom assembly, recycling and waste management
Class 41: Education services, including arranging and conducting educational classes and seminars, entertainment services, book publishing, organizing exhibitions and conferences
Class 42: Saas and Paas services (Software as a service and platform as a service), IT services, software development, graphic design services, website development, scientific and technological services
Class 43: Restaurants, cafes, hotels, catering services
Class 44: Medical services, hygienic and beauty care services, dental services, veterinary services
Class 45: Personal and social services, legal services, security services
For a more in-depth discussion read this article: Taking Advantage of the Trademark Classification
To open in a new tab, click: Classification of Goods and Services in a Trademark Application (class headings)
STEP 1
Initial trademark search
The team at Trademark Angel strives to make the trademark registration process as cost- and time-efficient and smooth as possible. For this reason, we offer to conduct a free trademark search for your proposed mark to give you an idea of how registrable your mark is in the country/countries you’d like to file.
We have talked extensively about benefits of doing an initial trademark search in other articles. In short, failing to search for similar marks prior to registration is quite risky and can result in additional business expenses that could have been avoided. For example, we have aided several clients who came to us after starting the process themselves, without conducting a thorough trademark search. These clients had already paid for products or packaging that displayed a mark that ultimately could not be registered as there were registered marks that were too similar to our clients’. These products and/or their packaging then had to be completely re-branded at great expense. This could have easily been avoided by an initial trademark search.
For more information about trademark searches, feel free to check out this article: Why conduct a trademark search?
STEP 2
Preparing your application
If the search results are positive and the mark looks registrable, we can start preparing your trademark application.
To help us prepare your application, we’ll need to know:
- Who the trademark owner will be
- If we are filing for your word mark or your logo (we usually make suggestions during the search)
- What goods and/or services you’d like to include, and
- If you’d like to file under intent to use of your mark or actual use of your mark
Intent to use vs Actual use
If you are already selling your goods or offering your services in the US, you can file for those goods and/or services under “actual use.” To prove your claim of actual use, you will need to provide what is called a specimen – in other words, an unedited photograph – which clearly shows your mark on the goods and/or services or the product packaging. A specimen is required for each class of goods/services you file for. In addition, you will need to provide the date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen.
If you are filing for goods and/or services you plan to sell in the near future, you will file for those goods and/or services under “intent to use.” After your application has received a “Notice of Allowance” (see below), you will be required to file a Statement of Use attesting to the fact that you have started using your mark on all of the goods and/or services listed in your application.
To read what's required in order to file a trademark application, please check this post: What’s required in order to file a trademark application in the US?
To read more about specimens of use and what specimens are acceptable, please check these posts: What is use in commerce (in the US)?, What is a specimen of use?, When do you need to submit specimens of use?, How do I find an acceptable specimen of use?
Fees
The cost to file an application in the US depends on how many classes you would like to include in your application. The government filing fee is $350 per class, and is NOT included in our packages.
STEP 3
Filing your application
Next, your application will be filed with the USPTO and we will email you a confirmation of the filing. At this time, you will also receive a trademark application number. You can check the status of your application at any time on the USPTO website with this application serial number.
Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products. We will always send you a draft of how your application will be submitted and ask that you approve the draft prior to submission. We ask that you provide us with clarifications regarding your products if the descriptions we list are not accurate.
STEP 4
Examination
Approximately three to four months after your application is filed, the application will be assigned to an Examining Attorney at the USPTO. This Examining Attorney will make decisions whether your application can move on to the next step of the process.
Office action?
If the Examining Attorney finds that changes must be made to your application (for example, the description of your logo must be amended to be more clear, or to clarify certain goods and/or services included in your application), or that your mark is confusingly similar to another prior-filed mark or registered mark, an office action will be issued.
A response to the office action must be filed within 6 months of the date on which the office action has been emailed. The failure to respond to all of the changes required by the Examining Attorney will be considered an “incomplete” response and may jeopardize your application.
To read more about different types of office actions, please check out this article: What are office actions?
STEP 5
Publication
After office actions have been responded to and all outstanding issues have been resolved, the Examining Attorney will approve your mark for publication in the Official Gazette. This does not mean that your trademark has registered; rather, your mark will be published for potential third parties to oppose your mark if they believe your mark conflicts with one of their own marks.
Receiving an opposition is quite rare, but if this does occur, we will happily refer you to an attorney with extensive experience in this field.
If no oppositions are filed against your mark within the 30-day publication period, your mark will proceed to the next step in the registration process.
STEP 6
Allowance
If you filed your application based on an “intent to use,” approximately six weeks after the end of the publication period, your mark will receive a “Notice of Allowance.”
A Notice of Allowance indicates that your mark has been approved to proceed to registration pending the filing of a Statement of Use. The deadline to file this Statement of Use is six months from the mailing date of the Notice of Allowance.
Within this six-month period, you must prove to the USPTO, through the filing of a Statement of Use, that:
- You are using your trademark on all of the goods and/or services listed in your application, and
- Your mark is being used in commerce.
To accomplish this, you must provide:
- Specimens – in other words, unedited photographs – of your product which clearly show the product and your mark on the product or the product packaging. You must provide at least one specimen per class listed in your application.
- The date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen. If you listed any services on your application, the relevant date would be the first date you offered those services.
To read more about Statement of Use, please check this article: What is a Statement of Use in a trademark application?
Fees
The government fee to file a Statement of Use is $150 per class, per mark. In addition, if, for any reasons, you cannot file a Statement of Use within the six-month period following the issuance of the Notice of Allowance, you must file for an extension. Up to five extensions of six months each, can be obtained for any one mark. The government filing fee for an extension is $125 per class, per mark.
STEP 7
Registration
If you filed your application based on “actual use,” and your mark has not been opposed by any parties, you will receive a registration certificate with a new registration number for your mark approximately six weeks after the end of the opposition period.
If you filed your application based on “intent to use,” and you have filed a Statement of Use, and that Statement of Use has been accepted by the USPTO, your mark will proceed to registration. A registration certificate, with a new registration number for your mark, will issue approximately four to eight weeks after your Statement of Use has been accepted.
The whole process takes 8 months to over 2 years!
Best scenario – 8 months Worse scenario – 2 years or longer
Now that your trademark is registered, you can put registered mark symbol ®. Please check these posts and cartoons about proper use of a registered trademark: When and how can I use my trademark symbols? and How not to invalidate your trademark: proper trademark usage rules
STEP 8
Post-Registration Maintenance
After your mark has been registered, you must “maintain” your mark to keep it active. Other than continuing to use your mark on all of the goods listed in your application, you must also file a Section 8 declaration between the 5th and 6th year after your mark has registered.
You may want to also consider filing a Section 15 declaration at this time, although it is not required.
Finally, you must file another Section 9 declaration to renew your trademark between the 9th and 10th years after your mark has been registered.
To read more about Section 8 and Section 15 declarations, please check out this article: What is a Section 8 Affidavit of Use?
It is important to use your trademark properly in order not to invalidate it. Please check these posts and cartoons on the topic: How do I lose my trademark protection?
Fees
The government filing fee to file a Section 8 declaration is $325 per class. The government filing fee to file a Section 15 declaration is $250 per class. The government fee to file a Section 9 renewal declaration is $325 per class.
Conclusion
As the trademark registration process in the U.S. can take over a year, we strongly suggest that you consider filing for your mark sooner rather than later. There have been instances where a client has waited to file for a mark until it was in “actual use,” and during that time, a competitor had filed for a similar mark. This forced our client to file for a different mark and to order new packaging reflecting this new mark.
For more information about registering your trademark, please take a look around our site, particularly the FAQ section. If you’re ready to file for your mark and begin the trademarking process, we are available via chat and email and look forward to working with you to protect your brand.
Updated on Dec 30, 2024
To open in a new tab, click: Steps to US trademark registration
When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.
On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.
For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.
The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.
However, filing for a logo can be more advantageous in some situations.
For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.
Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:
Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).
Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk 
- for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.
In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo 
instead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.
Since the client protected the logo , he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed - ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.
In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.
Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.
To open in a new tab, click: Which trademark should I File? Word Mark or Logo?
What is the difference between company name, business name, domain name and brand or trademark?
What are different types of company, domain, business or brand names? Let's get the names straight to avoid confusion.
- Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).
Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name
- Business name or doing business as: Name under which you conduct your business.
Example: Microsoft
Example: Skype
- Domain name: Name of your address on the Web.
Example: www.microsoft.com
Example: www.skype.com (Microsoft owns Skype)
- Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.
Example: MICROSOFT, 
, or a combined mark: 
Example: SKYPE, 
Let's take another example of a giant retailer Kraft Foods.
Company name: Kraft Foods Inc.
12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House, Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.
For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.
Not everyone knows that these 12 famous brands are owned by the same giant! It doesn't really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!
To open in a new tab, click: What are different types of names? Company name vs business name vs domain name vs trademark?
If you simply business incorporate or register a corporate name, it doesn't mean that the government approved for you to use the name as a trademark.
If we take a US LLC, as an example, every state has its own laws about business names.
You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.
In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.
To open in a new tab, click: Do I need to register a trademark if my business incorporated?
In the US, use is not required prior to filing. However, a trademark must be put to use prior to registration unless a foreign applicant relies on a foreign registration as the filing basis. To register a trademark one must file a Statement of Use together with specimens of use.
Use is mandatory after registration. In fact, a mandatory Affidavit of Use must be filed between the 5th and the 6th year after registration. If no affidavit is filed, the trademark is cancelled automatically.
In addition, trademarks that are not in use after registration may be cancelled by filing a petition to cancel.
To open in a new tab, click: Do I have to use my trademark in the US prior to filing? Do I have to use my trademark after registration?
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that's similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
To open in a new tab, click: Can I use my trademark if it isn’t registered?
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication.
In Canada, Australia and New Zealand one has to file a trademark opposition within a 2-month period.
A trademark opposition in South Korea may be filed by an interested party within 2 months from the date of its publication.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
A trademark opposition in Japan may be filed by an interested party within two months from the date of its publication. Trademarks are published twice, first time right after filing and second time after registration.
In Germany, publication happens after registration. Opposition period is 3 months.
In the European Union and China, a notice of opposition must be filed within 3 months following the publication.
In India, anyone may oppose registration of an Indian trademark within 4 months after publication.
To open in a new tab, click: How long is a trademark opposition process?
Trademarks may be filed at the state or federal level.
State trademarks protect your mark in a specific state while federal trademarks protect your mark in all the states.
State trademarks generally provide less legal protection than federal trademarks.
Businesses operating in only one state should trademark in that state. Businesses operating in interstate commerce may file for a federal trademark.
For example, if you operate a restaurant or a hair-dressing salon in Florida, you are not eligible for a federal trademark. In this case, you should apply for a trademark in the state of Florida. However, if you have two or more restaurant locations in more than one state, in our case, one in Florida and one in Georgia, you are eligible for a federal trademark.
A business intending on expanding nationally or internationally should conduct a trademark search and file a federal trademark as soon as possible.
To open in a new tab, click: What is the difference between State and Federal Trademarks?
Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.
In the US, you must renew your trademark every 10 years. The 10 year term is counted from the registration date. In addition, between the 5th and 6th year after the registration date, you must file an "affidavit of use" to keep the registration alive.
In European Union, Germany, the United Kingdom, India and Australia, you have to renew your trademark every 10 years. The 10 year term counts from the application date.
In China, trademarks have to be renewed every 10 years. The renewal period is counted from the date of registration.
In Canada, a trademark has to be renewed every 10 years (the renewal period was changed from 15 to 10 years in June of 2019). The 10 year term counts from the registration date.
To open in a new tab, click: How long are trademarks valid for?
Here we rank the countries where we file from the fastest to the slowest.
1. Germany is the fastest country and overall champion. It takes 1-3 months, on average to register a trademark in Germany. With accelerated examination, most trademarks register within a month. So this is a clear champion in terms of speed. Sometimes Germany can be a little unpredictable as it can take a month for one trademark and 3 months for another trademark.
2. One of the fast and most predictable in terms of timeline is the United Kingdom, where it takes about 3.5-4 months from filing to registration. Added bonus is low government fees.
3. In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using "fast-track" method, then the whole process takes about 3.5-4 months. We always EU applications using "fast-track" so European Union is very comparable to the UK (maybe a little slower).
4. It takes about 4-8 months to register a a trademark in Mexico but it can be somewhat inconsistent in terms of the time (sometimes it takes 4 months and sometimes more than 8 months).
5. You will have to wait for about 7.5-8 months to register a trademark in Australia unless we get an objection. Usually most trademarks register within a year or less.
6. In China, it takes 9-12 months to register a trademark if there are no complications. However, if there is an objection and we have to appeal, registration will be delayed by 8 months. China is determined to make the overall registration process faster, so it's possible that in 2020 this timeline will be shorter.
7. India is similar to China in terms of timeline. On average it takes 10 months to get a registration certificate if there are no problems during the process.
8. It takes a minimum of 12-14 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It's not uncommon for a registration to take a year or longer.
9. In Japan, it may take from 10 to 14 months for a trademark to register.
10. In Brazil trademark registration process takes on average 12-18 months. It's a pretty long time.
11. The last place is unfortunately taken by Canada. It takes 36-42 months to finish the registration process. If there are objections the overall registration process takes even more time. It's painfully slo-o-ow. Don't ask us why. We don't know the answer. We feel your pain though. Hopefully, as Canada joined Madrid protocol things will improve. We don't know if and when they will improve. Ever since pandemics began the whole process delayed even more (other countries haven't been affected so badly).
To open in a new tab, click: How long does it take to register a trademark?
A specimen of use is an example of how your trademark is used on goods and services in the marketplace. Goods means products.
To show use for goods, your trademark should be affixed/attached on the actual product or packaging of the product. A photo, mockup or drawing of the mark is not enough.
A person can submit tags, instruction manuals, containers, labels, or packaging materials. It may be the easiest to take a photo of your product and/or the packaging and ensure that the trademark is clearly visible.
Advertising materials are generally not acceptable as a specimen for goods.
If you offer services, the easiest way to prove use is to provide a screenshot of your website so that the trademark is clearly visible in the website header. You can also provide flyers, directory listings, and brochures. A business card or a photos of your business signage could be an acceptable specimen of use for services if the card displays your trademark along with the services the mark is associated with.
It is important to submit the right specimens of use in order to avoid trademark refusal. If you are not sure which specimens will be acceptable, call Trademark Angel.
https://www.youtube.com/watch?v=cY54_IMHmCQ&feature=youtu.be
To open in a new tab, click: What is a specimen of use?
In this video, we will discuss some examples of acceptable specimens of use for your trademark application.
First, we’ll discuss acceptable specimens for products.
A photograph of the product showing the mark the actual product.
Examples: metal plate on a bag or wallet; barbecue grill.
Packaging of the product showing the mark.
Example: tissue boxes; packaged fruit or vegetables; packaging for a toy.
Signage used in a product display in a store.
Example: Photograph of the physical product display.
Product labels and tags showing the mark.
Example: inside label of a t‐shirt; hang tag on a blouse or pants.
A Internet page showing the product near the mark and together with purchasing information.
Example: a website page shows a photograph of headphones, the mark for the headphones appears above the photograph, the price appears below or next to the photograph, and a shopping cart button or other way to purchase the headphones appears on the page.
If your product is downloadable software, you can prove use by showing copies of the instruction manual and screen printouts from the actual program that shows the mark in the title bar, or launch screens that show the mark in an introductory message box that appears after you open the program. A web page showing the mark in connection with the information sufficient to download the software will also be acceptable.
A specimen for services generally shows the mark used in the sale or advertising of the services. A customer should be able to associate your trademark with your services on the specimen.
https://www.youtube.com/watch?v=NgPs0ty3H0k&feature=youtu.be
To open in a new tab, click: How do I find an acceptable specimen of use?
In the US, trademark use is essential to register your trademark and to maintain it. Without use, there will be no registration and without a use after registration, your trademark may not be maintained.
Using for goods (products) is actually selling your products with your trademark being displayed either on the actual products or their packaging during the sale.
Using for services in the US is actually advertising and performing the services in the US in more than one state or in the US and a foreign country.
Important points:
Use must be “bona fide” – real sales to real customers. “Token use” is not acceptable.
Use must be in the ordinary course of trade – that means that goods and services must be used in a way which is typical in a particular industry.
Note: the US law says you need to use the trademark in interstate commerce. That means that when you sell your products they need to be sold and shipped to another state or to a foreign country.
https://www.youtube.com/watch?v=q8wSUE6NQHM&t=4s
To open in a new tab, click: What is use in commerce (in the US)?
- The full legal name of the applicant (either your company or your personal name)
- State of incorporation (if filing in your company name) or citizenship (if filing in personal name)
- The full address of the applicant.
- The telephone number and email address (not required).
- The trademark name. If you are filing for a logo, we need to see the logo.
- The products which you sell or plan to sell under your trademark (provide a list).
- The services which you offer or plan to offer under your trademark (provide a list).
- Whether the trademark been used in the US: yes/no. If yes, the date of first use (sale) in the US for each product and service.
- Specimens of use if your trademark is already in use. Specimens of use are photos of your products with your trademark clearly shown either on the products themselves or their packaging. Specimens of use for services can be a screenshot of your website where your trademark is clearly seen.
https://www.youtube.com/watch?v=v4bZWlgtQGk&t=4s
To open in a new tab, click: What’s required in order to file a trademark application in the US?
