U.S. Trademark Application Process
You can file a U.S. trademark from Canada. U.S. trademark applications can take anywhere from 12-18 months from time of initial filing to approval for trademark registration. However, this timeline make take additional time depending on the specifics of each application, the timeliness of responses by the applicant and whether opposition proceedings are commenced and litigated. Below is a summary of the general steps of a filing of a U.S. trademark application with the USPTO.
1. Application filed: When registering a U.S. trademark from Canada, the trademark application is filed with the USPTO and is assigned a serial number.
2. USPTO reviews application: If the minimum trademark filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the trademark application to determine whether federal trademark law permits registration of this mark. If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement.
3. USPTO publishes mark: If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period.
4. USPTO publishes mark: If the applicant’s response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG). Publication in the Official Gazettecommences a thirty-day Opposition Period. During the Opposition Period, members of the public may file an Opposition Proceeding to oppose registration of the mark. They may also obtain extensions of the Opposition Period. Opposition Proceedings are expensive, complex proceedings that are commenced in a relatively small number of applications.
5. Notice of Allowance (NOA) is issued: Within approximately 3 months after the mark is published in the Official Gazette, if no opposition was filed or any opposition is unsuccessful, then the USPTO issues a Notice of Allowance. The deadline for filing an SOU or request for extension of time (extension request) to file an SOU is calculated from the date the NOA issued. If the applicant does not file an SOU or extension request within 6 months of the date the NOA issued, the application will abandon. Under US law “use” means shipment of goods or provision of services in the US.
6. Applicant timely files Statement of Use (SOU): Where an applicant is using the mark in commerce on all of the goods/services, the applicant must submit an SOU and the required fee(s) within several months from the date the NOA issued to avoid abandonment. The Statement of Use must be accompanied by a “specimen” of the mark. A specimen is an image file of a label, packaging or photograph showing the mark used on the product. In the case of services, a specimen is advertising that includes the mark and some indication of the services offered. If the applicant has not started using the mark in commerce and filed a Statement of Use within six months of the NOA, a six-month extension may be obtained on request and payment of a fee. Up to 5 extensions may be obtained, giving the applicant up to three years to start using the mark in commerce in the US.
7. USPTO reviews SOU: If the minimum filing requirements are met, the SOU is forwarded to the examining attorney. The examining attorney conducts a review of the SOU to determine whether federal law permits registration. The applicant cannot withdraw the SOU and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds.
8. SOU is approved and mark registers: If no refusals or additional requirements are identified, the examining attorney approves the SOU. Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration “live,” the registrant must file specific maintenance documents. If an applicant is using the mark in US commerce at the time of the initial application and submits a specimen with the application, a NOA is not issued, there is no need for a Statement of Use and the registration is issued after completion of the Opposition Period.
9. Registration owner files declaration: Before the end of the 6-year period after the registration date, or within the six-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use, failure of which will result in the cancellation of the registration.
10. Registration owner files Declaration/Renewal: Within one year before the end of every 10-year period after the registration date, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal, failure which will make these required filings will result in cancellation and/or expiration of the registration.
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