
- Before filing a trademark application. the business must select the mark. The mark must be chosen with care and thought because not every mark may qualify for registration with the United States Patent and Trademark Office (“USPTO”). Some marks may not be capable of serving source identifiers by the owner looking to stop others from using a similar mark on related goods and services, and sometimes the mark has already been registered by another.
- Therefore, the business should perform a “knockout search” before an application is filed to ensure there are no other marks applied for or registered that are identical or too similar. This also allows the business to know if the mark may be considered generic or descriptive.
- The business must decide what goods and services will be associated with the trademark because the business will need to specify how the mark will be used as part of the application process.
- Also, the filing basis needs to be considered by the business before the application can be started. There are two types, use-based versus intent-to-use. A use-based filing may be made when the business is currently using the mark in commerce with the goods and services. An intent-to-use filing may be made when the business has a bona fide intention to use the mark in commerce with the goods and services
- With a use-based trademark application, the business will receive a Certificate of Registration after the application is approved, published, and no opposition is filed. With an intent-to-use application, a business will receive a Notice of Allowance and must file a Statement of Use within six months of receiving the notice. If the business is unable to show the use of the trademark in the first six months, the business can file extension requests every six months for up to three years and then file the Statement of Use once the goods/services are available in commerce.
- A trademark registration issued by the USPTO is valid for 10 years after the date of registration. During the fifth and sixth years after the registration date and between the ninth and tenth years, the business will need to renew the trademark if it continues to be used. During the fifth and sixth years, the business can file a Section 8 (and potentially Section 15) affidavit with the USPTO to validate that the mark is still in use. And during the ninth and tenth years, the business must again renew for its trademark to maintain ownership over the mark.