US trademarks, in plain English.
Each month I write up recent USPTO and Trademark Trial and Appeal Board decisions for business owners and filing firms. When you are ready to file, I handle that too.
Past issues
New applications
Classes, the goods and services list, and the filing.
Office action responses
What the examiner objected to, your options, and a response filed on time.
Use and maintenance
Statements of Use, Section 8 and Section 71 declarations, and renewals.
Owners outside the US
Owners based outside the US must use a US-licensed attorney. I act for them and their local firms, including on Madrid designations.
Common questions
Do I need an attorney to file?
If you live in the United States, or your business is run from there, you may file on your own. If you are based outside the United States, the USPTO requires a US-licensed attorney to represent you (37 C.F.R. § 2.11(a)). Filing alone is possible, but take care with the list of goods and services: after filing it can be narrowed, never widened (37 C.F.R. § 2.71(a)).
How long does registration take?
It depends on the USPTO's queue when you file. The USPTO publishes its current waiting times on its trademarks data page, and my written plan gives you an estimate before you file. An examining attorney reviews the application first. If it is approved, it is published, and anyone who objects has thirty days to oppose (15 U.S.C. § 1063(a)). If you filed before using the mark, you then file a Statement of Use, which shows the mark in use, before the registration issues.
What happens after registration?
A registration stays alive only if you keep filing. Between the fifth and sixth year after registration you file a declaration that the mark is still in use: Section 8, or Section 71 for a registration that came through the Madrid system (15 U.S.C. §§ 1058, 1141k). Between the ninth and tenth year, and every ten years after that, you file again, with a renewal under Section 9 (15 U.S.C. § 1059). A Madrid registration is renewed at WIPO instead, with a further Section 71 declaration at the USPTO. Each deadline has a six-month grace period for an extra fee. Miss that and the USPTO cancels the registration.