Trademark Services
ADDRESS UPDATE FREE
for Protectamark™ Clients
It is very important that you keep Protectamark™ and the Trademark Office informed of your contact information. The Trademark process spans several months and lapses in communication can result in the permanent abandonment of your trademark application. If you have changed your mailing address, phone number or email, please let us know immediately and we will update our records as well as the Trademark Office records free of charge.
OFFICE ACTION RESPONSES
$350/$550 + gov’t fee (if applicable)
The Trademark Office conducts both a procedural and substantive examination of applications. Some of the procedural issues that arise include clarification of your description of goods and services, description of your mark, conformity of your proof of use to your mark, disclaimers, and others. Substantive issues include descriptiveness refusals, mere surname refusals, and refusals for likelihood of confusion with other marks, among others. When the Trademark Office raises an issue, they do so through a document called an Office Action. Just because your application receives a refusal, doesn’t mean that you cannot argue around the refusal. The Protectamark™ trademark attorney who will handle your matter has prosecuted numerous trademark applications and successfully argued against just about every type of refusal you can encounter.
If you respond to the Office Action and do not persuade the Trademark Office to reconsider an issue, then they will issue a Final Office Action. When the Trademark Office issues a Final Office Action, you must either comply with the demands (if possible) or file an appeal. Again, just because you receive a Final Office Action doesn’t mean you cannot argue around it or appeal.
The Protectamark™ trademark attorney who will handle your matter has filed appeals to the Trademark Trial and Appeal Board that were so strong, the Trademark Examining Attorney didn’t even bother filing a brief and simply withdrew the refusal. So, if you are ready to get your application back on track, click on the button below to get started.
Respond to office action
$350 + gov’t fee (if applicable)
Respond to final office action
$550 + gov’t fee (if applicable)
Not sure which type of Office Action you received? Look at the Office Action or call for a Free Consultation.
WHEN ARE ADDITIONAL GOV’T FILING FEES REQUIRED?
Additional filing fees could be required where your description of goods and services is determined to span more classes than you originally paid for at filing. For example, if you paid a filing fee for two classes (i.e., $275×2=$550), but the description of goods and services you provided actually covers goods in three separate classes, then you may need to break out your description into the three classes and pay the additional $275 filing fee for the additional class.
WHAT ARE MY CHANCES FOR OVERCOMING THE REFUSAL?
Protectamark™ can overcome any refusal of registration that is based upon a procedural ground – it is the substantive refusals that can get a bit more complex. That being said, Protectamark™ has successfully argued around numerous substantive refusals of registration over the years. If Protectamark™ reviews your office action and determines that there is simply no chance of overcoming the refusal, you will be informed and issued a full refund. Protectamark™ treats clients right and would prefer to earn your business by helping you retool rather than lose your business after a hopeless argument.
WHAT HAPPENS IF MY RESPONSE IS NOT SUCCESSFUL?
If your response if not successful, then Protectamark™ will counsel you at no charge on the next steps – which could include filing an appeal or simply rebranding if necessary. Either way, the Protectamark™ goal is to get clients the broadest protection possible for their businesses.
STATEMENT OF USE – EXTENSION OF TIME
$250/$150 + gov’t fee
Before you can obtain a certificate of registration ALL of the goods/services in the application must be in actual use in commerce. If you filed an Already-in-Use application, then you already proved use at the time of filing. With an Intent-to-Use application, however, you must later prove use through the filing of a “Statement of Use.”
Once an Intent-to-Use application has been approved and published, you receive a Notice of Allowance. You then have six months to file either: 1) a Statement of Use proving use of ALL of the goods and services in your application, or 2) a request for a further six month extension of time.
If you are ready to prove use of ALL of the goods/services in your application, then use the Statement of Use package below to complete the final step of the registration process. In the alternative, if you Need More Time, then use the Request for Extension package below to request another six (6) months.
Not sure which package you need? Click on the links below or give us a call at _____________ for a Free Consultation.
WHAT IF ONLY SOME OF MY GOODS/SERVICES ARE IN USE?
You can permanently delete those goods/services that are not in use and allow the application to register as to only those goods/services that are actually in use or (Most Likely Scenario) you can file a Request for Extension of Time so that you may later file the Statement of Use when ALL goods/services are actually in use. There is another option of dividing the application into separate applications, but it is costly and rarely done.
HOW MANY EXTENSIONS ARE ALLOWED?
You can file up to five (5) requests for six (6) month extensions of time. Therefore, you have a total of thirty-six (36) months from the Notice of Allowance to prove use.
WHAT HAPPENS IF I RUN OUT OF ADDITIONAL EXTENSIONS?
You cannot extend beyond thirty-six (36) months from the Notice of Allowance. Your application will be deemed abandoned if use cannot be established in that timeframe. If you believe you are likely to be in this situation, you should consider filing a backup application right away to potentially avoid any intervening application by a third party.
OWNERSHIP AND ASSIGNMENT
$150/$250 + $40 gov’t fee
Company Name Change or Formation
If you have changed the name of your company, changed from a corporation to an LLC (or vice-versa), merged out to another entity name or State of incorporation, then you must keep the Trademark Office records up to date with the latest information. Protectamark™ will prepare and submit the documentation for a reasonable flat fee. There is also a Trademark Office filing fee due at the time of filing equaling $40 for the first property and $25 for each additional property.
Assignment to a Third Party
If you didn’t just make a changed to your company, but actually sold your company or formed a new entity, then you need to transfer the rights to your trademarks. You must prepare an assignment and then record that assignment with the Trademark Office in order to keep them up to date with the latest information. Protectamark™ will prepare an assignment document for you and record the same with the Trademark Office for a reasonable flat fee. There is also a Trademark Office filing fee due at the time of filing equaling $40 for the first property and $25 for each additional property.
Renew Your Registration
$350 + gov’t fee ($325/$425)
Once your trademark is registered, the Trademark Office will refuse registration to subsequent applications directed to confusingly similar marks. Therefore, the Trademark Office wants to periodically make sure that you are still using the mark and that the mark remains unavailable for others to use. As a result, you must file evidence of continued use between the fifth and sixth year after you obtain your registration. After that, you then have to file evidence of continued use every ten years after the registration date.
Section 8&15 (Between 5th and 6th years): When you file between the fifth and sixth year of registration, you should also file a declaration of incontestability – the golden nugget of trademark law. That document renders your registration incontestable by third parties – even if they otherwise had a basis to challenge your rights (i.e., such as earlier use or the like). The fee to file the evidence of use between the fifth and sixth year after registration, together with the declaration of incontestability, is presently $325.
Section 8&9 (Every 10 years after registration): You must file evidence that you are still using the mark between the ninth and tenth year following registration and then every ten years after that. The fee to file is presently $425.
If you are ready to file your renewal, then click the appropriate button below to Get Started.
Not sure which package you need? Click on the links below or give us a call at _____________ for a Free Consultation.
WHAT IF ONLY SOME OF MY GOODS/SERVICES ARE STILL IN USE?
Unless you meet one of the fairly strict criteria for excusable non-use, you must only renew your registration for those products and services in your registration that remain in actual use. You do not need to prove that every item is in use – the Trademark Office will accept your word for it through your sworn declaration – but if you renew for products and services that are not in actual use, then your registration could be later cancelled by third parties on grounds of false declaration – i.e., fraud. Therefore, it is very important to make certain that you renew only for goods and services in actual use.
WHAT IF I HAVE ADDED GOODS/SERVICES UNDER MARK?
If you have added goods and services under your registered mark, it is not possible to include those at the time of renewal. We will counsel you and determine whether the additional goods and services are sufficiently protected under the umbrella of your existing registration, or whether they merit filing another application to protect your rights. We will do a cost benefit analysis to help you make that determination.
WHAT EVIDENCE OF USE DO I NEED TO PROVIDE TO THE OFFICE?
You do not need to prove that every item is in use – the Trademark Office will accept your word for it through your sworn declaration – but if you renew for products and services that are not in actual use, then your registration could be later cancelled by third parties on grounds of false declaration – i.e., fraud. Therefore, it is important to submit evidence of use that shows the current manner in which you are using the mark. Product packaging, hang tags, websites promotional of services, etc. When you submit your evidence of use, we will review it and counsel you accordingly. That is part of the package.
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Call Protectamark™ today and find out how much your company could save by having a trademark attorney at The Kinder Law Group® or Protectamark™ handle your international portfolio.
