People ask me all the time if it’s possible to trademark a product name. The answer is….sometimes. Some categories of product names are eligible for federal trademark registration with the United States Patent and Trademark Office (USPTO), while others are not. In general, the more unique and creative your product name is, the easier it will be to register it as a trademark and the greater scope of protection it will receive.
A final office action is issued by the United States Patent and Trademark Office (USPTO) if you didn’t successfully or properly respond to all of the issues raised in a previous trademark office action. If your trademark application was filed directly with the USPTO, then you must take action within three months from the date the final office action is sent (or six months if you timely filed a Request for an Extension of Time to File a Response). On the other hand, if you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then you must take action within six months from the mailing date of the final office action. If you fail to do so, in both cases your trademark application will go abandoned and you’ll have little choice but to begin the trademark application process all over again.
If you receive a final office action, you basically have three options:
If you filed your trademark application under Section 1(b) (intent to use), the United States Patent and Trademark Office (USPTO) will issue the Notice of Allowance once the 30-day trademark opposition period has expired. You then have six months to show the USPTO that your trademark is in use in commerce in connection with all of the products and/or services listed in your trademark application. If you’re unable to make use of your trademark within those six months, you may file a Request for an Extension of Time.
The Statement of Use is a sworn declaration that your trademark is currently in use in commerce in connection with all of the products and/or services listed in your trademark application. If you filed your trademark application under Section 1(b) (intent to use), you must prepare and submit the Statement of Use before the United States Patent and Trademark Office (USPTO) will grant registration of your trademark. As part of the Statement of Use, the USPTO requires you to (1) set forth the date on which your trademark was first used anywhere in the United States, (2) set forth the date on which your trademark was first used in interstate commerce, and (3) submit at least one specimen showing actual use of your trademark per class of products/services listed in your application.
Understanding the trademark registration renewal periods is crucial to avoiding inadvertent cancellation of your trademark registration by the United States Patent and Trademark Office (USPTO). Although a trademark itself can theoretically last forever so long as it’s being used in commerce in connection with the advertising and sale of products or services, a US trademark registration must be maintained and renewed periodically in order keep it in full force and effect. The good news is that renewing a trademark registration and preventing it from becoming a canceled trademark registration isn’t a very difficult or time-consuming thing to do. The bad news is that you actually have to remember to meet and comply with the trademark renewal deadlines. Thankfully, the USPTO will generally send a renewal reminder to the owner of the registration if the owner provided its email address to the USPTO in a previous filing.
