Our In-House US Attorney, Waheedan Jariwalla, will be able to guide you through the process of registering your trade mark in America and Canada.
The US/Canadian market is a lucrative one, and more and more businesses are seeking to take advantage of that by expanding across the ocean. Many overlook the importance of protecting their IP and find themselves embroiled in legal disputes further down the line. This can be prevented with some great legal advice and necessary attention to detail.
Our fees are transparent and our service is quick and efficient. We will work hard with you to ensure to the best of our ability that you achieve the end result you want.
Contact us today and let us help you protect your business’ most valuable asset!
We advise all our clients to undertake a trade mark search first. It could save you time and money in the long run, especially if your trade mark (or one very similar) happens to already be registered in the US/ Canada.
Once you are happy to move forward, we will go ahead and file for registration of your mark.
In the US, there are several “filing bases” that we can use when we file.
1) IN USE – This applies if you are already using your mark in US Commerce and you can provide “proof” of the same. The “proof” would be in the form of a “specimen”. If you sell T-shirts, for example, a specimen could be as simple as a photograph of the shirts you sell in the US with your trade mark on them. We will guide you in obtaining a valid specimen.
2) INTENT TO USE – This applies if you are not using your mark in the US yet. At the end of the filing process, you would then receive a Notice of Allowance. You would then have 36 months from the date of the Notice of Allowance to begin using your mark in the US and provide proof of the same. Only then will your mark officially register.
3) BASED ON A FOREIGN MARK – If you have an application or registration for the same mark in the UK or EU, and you or your company are based in the UK/EU, you can utilise this filing basis. All it means is that you will not be asked to submit proof of use of your trade mark prior to registration. If the application process is successful, your mark will automatically register.
After filing, it will take about three months for your mark to be assigned to a USPTO examining attorney. The attorney will then review your application and send us your “Examination Report”, if necessary. The Report will address any issues with the application. The attorney may want some clarification with regards to the goods or services. Or there may be an issue with regards to inherent registrability or a conflicting prior mark, for example.
We would then address the issues raised in the Report for you. The only time additional fees will be incurred is if a conflicting prior mark is raised and you wanted us to draft and submit arguments on your behalf as to why you believe no conflict exists.
We would work with you to ensure all issues are addressed, so that hopefully your application for trade mark registration can continue!
Upon successful examination, your trade mark will then be published in the USPTO’s and Canadian Office, official Trade Mark Gazette for a period of 30 days. During this time, any third party can file an “opposition” against your mark if they believe there is a conflict. They can also file an “extension of time to oppose” which would then extend the 30-day opposition period.
If no oppositions are filed during this time, your mark can now proceed to registration or with a Notice of Allowance!
If your mark was filed on an ‘IN USE’ basis or upon a foreign application/registration, upon the end of publication, your mark will then register in due course.
If your mark was filed on an ‘INTENT TO USE’ basis, you will then receive a Notice of Allowance.
If you are issued with a Notice of Allowance, you will have up to 36 months from that date to begin using your mark in the US and declare the same.
Every six months from the date of the Notice of Allowance you will have to file an “Extension of time to file a Statement of Use”, if you have not yet begun using the mark. You can file an Extension up to five times. After the fifth time, no more extensions are permitted, and you must begin using the mark.
If you have started using the mark you will then need to file a “Statement of Use”. This is an official declaration that you have begun using the mark in the US and an accompanying “specimen” (example of how you are using the mark).
The filing of Extensions of Time and Statements of Use WILL incur additional legal and filing fees.
Congratulations! Your mark is now registered. But there are certain steps you have to take to ensure the survival of your trade mark.
1) Between the fifth and sixth year after registration, you must file a §8 Declaration of Continued Use. This is a sworn statement that your mark is still in use in US Commerce. You must also submit a “specimen” showing how your mark is still being used. There are legal and filing fees associated with this filing.
2) Between the ninth and tenth years after registration, another §8 Declaration of Continued Use and an Application for Renewal must be filed. There are legal and filing fees associated with these filings.
3) §15 Declaration of Incontestability of a Mark
A §15 Declaration is a sworn statement claiming “incontestable” rights in the mark for the goods/services specified. An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The filing of a §15 Declaration is optional. An owner may choose to claim the benefits of incontestability by filing a §15 Declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.
A §15 Declaration may only be filed when (1) there has been no final decision adverse to the registrant’s claim of ownership or right to register the mark, (2) there is no such proceeding pending, (3) it is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration and (4) the mark has not become generic.
The §15 Declaration must be executed and filed within one year following a five-year period of continuous use of the mark in commerce.
Incontestability shields a registrant from certain challenges to the validity of a mark, notably challenges based on descriptiveness. These include challenges that (1) the mark merely describes the goods or services, (2) the mark is descriptive because it is primarily merely a surname, and (3) the mark is descriptive because it is a geographic place name that will immediately convey a goods-place or services-place association in the minds of consumers.
However, please be aware that registrations are still subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow.
For more information on filing in the US and Canada please contact us today and we will be happy to assist.
All work carried out by the Trademarkroom is overseen by qualified or trainee Solicitors who also work at Lawdit Solicitors, a law firm regulated by the Law Society.
