Mamdani Law, PLLC

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"Trademark registration puts the rest of the world on notice that you claim ownership of the mark in commerce in connection with the relevant goods or services."


trademark Application 

Although not required prior to filing an application, you are encouraged to search the USPTO's trademark database to see if any mark has already been registered or applied for that is similar to your mark and used on related products or for related services. If your search yields a mark that you think might conflict with your mark, you should then check status to see if the application or registration is still "live," since any "dead" mark cannot be used to block a new application.

A complete search is one that will uncover all similar marks, not just those that are identical. In this regard, searching for trademark availability is not the same as searching to register a domain name. A domain name search may focus on exact or "dead on" hits, with no consideration given to similar names or use with related products and services. Basically, a domain address is either available or it is not.

Office Action

There are two types of Office actions: non-final and final actions. A non-final Office action raises an issue for the first time. A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. An applicant's response to a final Office action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.

An examining attorney sends an Office action to notify an applicant about issues with his or her application. This type of action will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will abandon the application, the application fee will not be refunded, and your mark will not register.

International trademark

Trademark Electronic Application Submission International (TEASi) is an e-filing system that allows for the filing of the forms required under the Madrid Protocol to the United States Patent and Trademark Office (USPTO). The Madrid Protocol is an international treaty that establishes a framework for the international registration of trademarks. It allows a trademark owner to file for registration in any of the countries (called Contracting Parties) that have joined the Madrid Protocol by filing a single application, called an “international application” or “Madrid application.” The international application is based on an application or registration in the trademark owner’s own country (a basic application or basic registration).

The International Bureau (IB) of the World Property Intellectual Organization (WIPO) administers the international trademark applications under the Madrid System for the International Registration of Marks (the Madrid System). TEASi allows USPTO customers to submit electronic forms for the filing of an application for international registration, subsequent designation, request for transformation, request to note replacement, and response to a notice of irregularity issued by the International Bureau of WIPO

Maintaining registration

After a registration issues, to keep the registration "alive" or valid, the registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of your registration. Between the 5th and 6th year after the registration date the owner must file a Declaration of Use or Excusable Non-use under Section 8. This declaration requires a fee. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the registration.

The Section 8 declaration may be combined with an optional Section 15 declaration of incontestability. Between the 9th and 10th year after the registration date and every 10 years thereafter, the owner must file a Combined Declaration of Use or Excusable Non-use and Application for Renewal under Sections 8 and 9. This filing requires a fee. The filing may also be made within a 6-month grace period after the 10th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation and/or expiration of the registration.