Law Articles

Return to Law Dictionary Index

Trademark Application Procedure

Do I have to be using the trademark before seeking a registration?

In most states you do need to be using the trademark before applying for a registration.

The federal system includes two types of trademark registrations when considered based upon use. One where use is required and one where the applicant intends to use the trademark.

What are the types of federal trademark applications?

The Intent-to-Use application may be filed if the applicant has a bona fide intent to use the trademark. Intent-to-Use applications need to be converted to a standard registration within a certain time period or the intended trademark will be considered abandoned.

The federal system also provides for filing a standard application based upon actual use.

What is the procedure with a federal Intent-to-Use application?

Please contact us so that Angenehm can determine if a conflict of interest is present. If you contact us via e-mail, you will receive the results of the conflicts check in about a day! The e-mail message you will receive will ask for the necessary information for us to be able to serve you. Results of the conflicts check will be same day, If contacting us via telephone or fax. When the application is prepared, and the retainer is received, the application is filed.

In about 6-9 months the federal government will issue either an office action or a Notice of Publication. An office action records the examiner's objections to or rejections of the application on various legal grounds.

An amendment or response is usually prepared if an office action issues. Such documents seek to overcome the objections/rejections issued by the government. The "office action and response/amendment process� may occur a couple of times. If successful, a Notice of Publication will issue and the mark will be published for opposition. Anyone who believes they may be harmed by registration of the trademark may oppose the registration. A Notice of Allowance will issue if nobody opposes registration of the trademark. If the amendments/responses are not successful, the application is abandoned.

At any time throughout this process an affidavit alledging use may be filed to change the application into a standard application. Additional charges apply if the affidavit is not filed prior to the issuance of the Notice of Allowance.

Affidavits supporting the applicant's intention to use the trademark need to be filed at regular intervals if use has not been alleged prior to issuance of the Notice of Allowance. Failure to file sufficient affidavits or expiration of 36 months (prior to filing the statement alledging use) results in abandonment of the application.

Once the statement alleging use is filed the application is converted into a standard application.

What is the procedure for prosecuting a standard federal application?

Please contact us so that Angenehm can determine if a conflict of interest is present. If you contact us via e-mail, you will receive the results of the conflicts check in about a day! The e-mail message you will receive will ask for the necessary information for us to be able to serve you. Results of the conflicts check will be same day, If contacting us via telephone or fax. When the application is prepared, and the retainer is received, the application is filed.

In about 6-9 months the federal government will issue either an office action or a Notice of Publication. An office action records the examiner's objections to or rejections of the application on various legal grounds.

An amendment or response is usually prepared if an office action issues. Such documents seek to overcome the objections/rejections issued by the government. The "office action and response/amendment" process may occur a couple of times. If successful, a Notice of Publication will issue and the mark will be published for opposition. Anyone who believes they may be harmed by registration of the trademark may oppose the registration. A Notice of Allowance will issue if nobody opposes registration of the trademark. If the amendments/responses are not successful, the application is abandoned.

A certificate of registration issues if nobody opposes registration of the trademark. Between the fifth and sixth years the applicant must submit an affidavit or declaration of continued use. A trademark registration lasts indefinitely with the continued filing of an affidavit with the statutory fee on each tenth anniversary thereafter.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/

Return to Intellectual Property

Return to Law Dictionary Index