2.1 Detailed process explanation (click to open) 

Filing a mark in the USA requires a lot of preliminary work. Some companies are willing to cut corners, but saving a few days in the beginning will result in months spent preparing responses to objections that could otherwise be avoided.

1. Are you using the mark in the USA? If yes, it means that you can take the straightest route to registration by using an "Actual Use" basis for registration, that's the best option.
2. If you are not using the mark in the USA there are 2 options: "Foreign Registration" and "Intent to use". (1. How to choose a basis for filing 2. How to prepare a Specimen of Use that will not be refused)
3. Before filing the mark you should clearly describe your products/services in accordance with the rules of the USPTO. Our consultants will help you with this.
4. Come up with a trademark name and decide if this is a wordmark, a logo or a combined mark.
5. You should perform a basic check before filing a mark, if we spot that your mark is descriptive or generic, we'll inform you of this. We recommend ordering a trademark study to learn the probability of registration.
6. Once we have a list of products/services, a basis for filing and a name(s) of the owner(s) we are ready to file the mark. 
7. The mark will be filed within 3-5 days and you will get a filing number. 

2.2 Trademark Registration Process (once filed)

If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. Under certain international agreements, you may file in the U.S. based on a foreign application, foreign registration, or international registration, in this case, the trademark and the description must be identical to the filed US trademark.

Trademarks are protected by registration. An unregistered trademark may be protected by the U.S trademark law if used in commerce (common law). The United States applies the first-to-use system.

3.1 Specimen of use

The specimen of use is a proof that the trademark is used in the US. For products, the specimen could be a photo of an actual product with the trademark on it, for services - promotional materials. However, there are several other options, please contact us if you have any questions.

4.1 The most typical issues which lead to an objection are:

• likelihood of confusion;
• specimen refusal;
• identification and classification issues;
• translation required;
• clarifications required;

etc.

Content:

5.1 Renewal in the USA

5.2 Grace period

5.3 Renewal between the 5th and 6th year

5.4 Grace period (the 5th and 6th year renewal)

5.5 Declaration of Incontestability

5.6 Specimen of Use for a renewal

5.1 Renewal in the USA and the fees for renewing a trademark in the USA.

Renewing a trademark in the USA means filing 2 forms: a Declaration of Use (§8 declaration) and a registration renewal application (§9 application). The government fee for filing these 2 declarations is $525 per class.

In the USA a trademark registration is valid for a full term of 10 years from date of registration. However, after the registration you should file the Declaration of use and specimen of use between the 5h and 6th year after the registration date. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date.

When renewing a trademark you can limit the products or services you have associated with your trademark. You MUST remove the services/products you no longer sell. The USPTO may audit your declaration of use and ask you to submit Specimens of Use for EACH product/service you have in your description. 

If the USPTO finds out that you have products/services you no longer sell, they will ask you to remove them. 💰 Deleting goods/services/classes from registration, after filing the declaration and before acceptance will lead to an extra fee of US$225 per class.

5.2 Renewal grace period in the USA and the extra fee.

💰 Six months after the expiration date, the government fee for filing a renewal within the grace period is US$100/class for renewing the registration (§9 registration) and US$100/class for the declaration of use (§8 declaration). Therefore, you will pay at least US$200 in government fees for renewing a trademark within the grace period in the USA.

5.3 The 5th-6th year renewal in the USA, declaration of use and its price.

A trademark owner must file a Declaration of Use between the fifth and sixth year of registration along with a specimen of use. Note that even if your trademark registration is based on a foreign registration or international registration, you still will have to file the Declaration of Use in the USA and actually use your trademark in the US.

If the declaration is not submitted, the mark will become abandoned (cancelled).

When submitting a renewal you have 2 options: to submit a new declaration of use (DoU) with a specimen of use OR to submit the declaration of use, the specimen, and the declaration of incontestability. For the second options, there is an extra GOVERNMENT fee. A Specimen of Use must be submitted in any case.

When filing a declaration of use you must remove the services/productsyou did not sell within the last 3 years before filing the declaration of use. The USPTO may audit your declaration of use and ask you to submit Specimens of Use for EACH product/service you have in your description. 

If the USPTO finds out that you have products/services you no longer sell, they will ask you to remove them. Deleting goods/services/classes from registration, after filing §8 declaration and before acceptance will cost US$225 per class.

5.4 Grace period in the USA for the renewal between the 5th and 6th year.

If you missed the deadline for submitting the declaration of use between the 5th and 6th year, you can still do this within the six months after the expiration date. There will be an extra government fee of US$100/class for this. 

There is no extra fee for submitting a Declaration of Incontestability with the Declaration of Use within the grace period. Only the extra fee for the Declaration of Use ($100/class) is to be paid.

5.5 Declaration of Incontestability (DoI), the cost of the DoI.

A Declaration of Incontestability (a.k.a. Section 15)  costs $200 per class in government fees. Once a trademark is incontestable, the registration cannot be challenged by third parties based on its descriptiveness and based on some other reasons.However, it still can be cancelled based on one of the following (that's not a complete list):

1. Non-use of the mark during 3 consecutive years
2. Genericization of a trademark
3. Fraud when submitting the declaration

An incontestable mark DOES NOT become TRULY and COMPLETELY incontestable. Actually, we think that this term is somehow misleading as it does not protect against a trademark with prior use or registration, which are the most common grounds for cancellations. 

This might become useful in the long run if your trademark is challenged based on its alleged descriptiveness but otherwise it will not help in many other cases.

It’s not obligatory to file the declaration of incontestability as it is not required to renew your mark between the 5th and the 6th year. If your budget is limited you may ignore this option. 

You can submit the Declaration of Incontestability only once between the 5th and 6th year after registration of your trademark. 

5.6 Specimen of Use for a renewal and for submitting between the 5th and 6th year.

There is no rule forbidding the use of the same Specimen of Use you used when registering or applying for your trademark. At the same time, the requirements to Specimens of Use in the last 5 years became more stringent and some old Specimens of use might be refused under the new regulations.

A specimen for goods could show the trademark either on the label attached to the goods themselves or on the packaging for the goods. For example, your specimen could be a photograph of your product. The specimen may not be a digitally altered image or photograph, computer illustration, artist’s rendering, or similar mock-up of these items. It must be a photograph of the actual product or packaging that is being sold to customers.

Your web page can also be a proper specimen if it shows your trademark directly associated with your goods and is of a point-of-sale nature. In this case, the specimen would need to show:

• The trademark displayed near a picture or textual description of the goods (trademark directly associated with the goods)
• Purchasing information to allow customers to buy the goods from the site (point-of-sale nature)
• The prices should be in USD

For all web page specimens, you must provide an actual screenshot of the web page, the URL, and the date the web page was accessed and/or printed. Merely providing a web page address where the goods may be purchased is not an acceptable specimen.

Cancelation Action or Petition for Cancellation is a legal case similar to a civil lawsuit. This is a specialized proceeding that allows challenging the registration of a trademark. The Trademark Trial and Appeal Board (TTAB) of the USPTO functions like a court and hears Petitions for Cancelation of a trademark registration.

Any party may consider filing a cancelation, if the trademark(s) or business(es) owned by such a party are affected by the current registration; or the registered mark interferes the ability to fairly compete or hurts reputation or operation of the business.

There are two main requirements to maintain a cancelation proceeding against a registered US trademark:

• the current registration damages the rights of a petitioner;
• there are valid grounds why the registration should be terminated.

The grounds for the trademark cancellation can be divided into two categories:

• the grounds that fall under the first category, can be used within the first 5 years of trademark registration;
• the grounds for the second category can be used indefinitely.

The following are among the most common grounds for trademark cancellation within the statutory five-year window:

• 1.    The trademark is not in use for at least 3 years: it was either abandoned or has never been in use as alleged in the application; there was no bona fide intention to use the trademark in commerce;
• 2.    Likelihood of confusion. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. 
• 3.    Dilution of a famous trademark exists.
• 4.    The trademark is a surname, merely geographically descriptive mark or merely descriptive. Such trademarks are non-registrable.
• 5.    The trademark has become generic (e.g. escalator or aspirin).
• 6.    Fraud have been committed during the trademark registration process.
• 7.    Trademark is either deceptive, scandalous or immoral.

After the 5-year frame has passed a petitioner may have more limited grounds to request cancellation. The filing a cancelation action on the ground of likelihood of confusion is no longer available after the 5th anniversary of the trademark registration. The dispute can be started if the mark has become generic; has been abandoned or is not under the control of the registrant; is fraudulent, immoral, scandalous or deceptive.

If the settlement agreement can’t be reached upon the submitting a Petition for cancelation, the two next major phases in the cancellation proceedings are: (1) the discovery phase; and (2) the trial phase. The discovery/trial phases include the following major events:

• Time to Answer
• Deadline for Discovery Conference
• Discovery Opens
• Initial Disclosures Due
• Expert Disclosure Due
• Discovery Closes
• Plaintiff's Pretrial Disclosures
• Plaintiff's 30-day Trial Period Ends
• Defendant's Pretrial Disclosures
• Defendant's 30-day Trial Period Ends
• Plaintiff's Rebuttal Disclosures
• Plaintiff's 15-day Rebuttal Period Ends

Cancelation proceedings may take up to several years and cost thousands of the US dollars.

There are generally no official fees that need to be paid to the USPTO in a cancellation (other than the $600 filing fee/class). The discovery phase fees start from US$10000 and the trial phase fees start at US$20000. These prices are mostly comprised of the legal fees and may not include any costs for travel (e.g., depositions, hearings, trial, etc.), deposition services (e.g., court reporters and transcript costs), expert services (e.g., consumer survey evidence), etc.
 

The official fee for filing a trademark application in paper in United States is USD 600 per class.

The filing fee is USD 350 per class when using TEAS Reduced Fee (TEAS RF) and USD 250 per class when using TEAS Plus.

This filing option applies to simplified applications using predetermined goods and services. Our listed fee is for a TEAS Plus application with a limited number of goods (up to 10 items per class). We'll help you pick a list of items accepted by the USPTO, this will allow you to avoid objections and get your mark registered faster. For a list including more than 10 items we recommend using a TEAS RF form.

Contact us for more details.
 

When you wish to sell your trademark or if there is a change of ownership for any other reason, such as if your old company is closing down and you are starting a new one, the procedure you will need to complete is a trademark transfer, also known as "trademark assignment" or "change of ownership".

This process is not very different from changing ownership of any piece of property and your representative must inform the Trademark Office of the change of ownership. You will need to provide us with a Deed of Assignment (Assignment Agreement). A simple scan of the document is sufficient. The document must be signed by the Assignor and the Assignee (the Seller and the Buyer).

A simply signed power of attorney will be required.

Assignment Process takes around 2 months and the USPTO may refuse to change the owner if the agreement is not in accordance with their requirements. We will provide you with the agreement drafted according to the standards of the USPTO.

It’s forbidden to transfer Intent-to-use applications until they are registered.