If your trademark application has gone abandoned because you unintentionally failed to timely file the Statement of Use, an Extension of Time, or a response to a trademark office action, you may be able to revive your abandoned trademark application by filing a Petition to Revive.
If you’ve stumbled across this blog post, you probably find yourself needing to answer a petition for cancellation that’s been filed against your trademark registration. As you may know, a trademark cancellation is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging the continued federal registration of your trademark. Unless you have legal grounds for filing a motion to dismiss the cancellation (which is pretty rare), the first thing you’ll need to do after the TTAB institutes the cancellation proceeding is to draft and submit an answer.
If you’re reading this article, chances are you need to answer a trademark opposition that has been filed against your trademark application. As you may already know, a trademark opposition is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging your right to register your trademark. Unless you have a legitimate legal basis for filing a motion to dismiss the opposition (which is fairly rare), the first step you’ll need to take after the TTAB institutes the opposition proceeding is to prepare and file an answer.
Filing an intent to use trademark application with the United States Patent and Trademark Office (USPTO) may be a good option if your trademark is not yet in use in commerce. It’s essentially a way to reserve your right to use a name, logo, or slogan in connection with the advertising and sale of specific products/services. Assuming your intent to use trademark application eventually becomes a trademark registration, all of your rights will date back to the filing date of the application. In other words, filing an intent to use trademark application prevents others from potentially acquiring common law trademark rights in a similar name while your trademark application is going through the registration process.
Filing an extension of time to oppose a trademark application is a relatively easy and inexpensive way to reserve your right to file a trademark opposition. It provides you with more time to carefully consider whether you want to invest your valuable time and money in formally opposing a trademark application. It also gives you time to contact the owner of the trademark application in order to discuss any questions or concerns you may have regarding the trademark or any of the information presented in the trademark application.
The Notice of Allowance is a very important milestone for a trademark application that was filed on an intent to use basis. The Notice of Allowance essentially indicates that (1) the United States Patent and Trademark Office (USPTO) approved your application after examination, (2) your application was published for opposition, and (3) a third-party did not prevent the registration of your trademark. Although the Notice of Allowance brings you one step closer to the successful registration of your trademark, it’s critical that you understand what you need to do next in order to complete the registration process.
You might see the phrase “published for opposition” when you check the status of your trademark application on the United States Patent and Trademark Office (USPTO) website. The meaning of “published for opposition” is something that all owners of pending trademark applications should understand because it can be the most consequential part of the entire US trademark registration process.
Current and prospective clients ask me all the time, “How long to register a trademark in the US?” Unfortunately, there’s no one-size-fits-all answer to that seemingly simple question. Depending on your particular situation, it could be a matter of months. But, in some cases, it could take many years. The good news is that no matter how long it takes for the United States Patent and Trademark Office (USPTO) to issue the Certificate of Registration, all of your federal trademark rights date back to the filing date of your trademark application. In other words, it’s not the actual registration date that matters. In fact, the registration date is only relevant to calculate trademark registration renewal deadlines. It’s the application filing date that reserves your nationwide priority to use your trademark in connection with the advertising and sale of the products/services listed in your application.
After you file your trademark application, the United States Patent and Trademark Office (“USPTO”) may issue a trademark office action indicating that your mark is being refused registration on the basis that it’s merely descriptive of your products and/or services. This merely descriptive trademark refusal is based on the trademark examining attorney’s belief that your mark merely describes a characteristic, feature, quality, function, or purpose of the products/services listed in your application. Descriptiveness refusals are extremely common because people who file their own trademark applications or use a trademark document preparation service like LegalZoom, Trademarkia, or Trademark Engine aren’t generally aware that registering merely descriptive words and phrases as trademarks can be very difficult, if not impossible.
The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark incontestable. The Section 15 Declaration may only be filed if (1) the mark is registered on the Principal Register (not the Supplemental Register), (2) the mark is still in use in commerce, and (3) the mark has been in continuous use for five consecutive years subsequent to the date of registration. Once the USPTO acknowledges the Section 15 Declaration, the trademark owner’s right to use its mark in commerce in connection with the products/services listed in the registration becomes incontestable.