At MAVEN, we regularly file trademark applications in the United States and abroad (directly, if filing based upon the Madrid System for International Registration of Marks; or alternatively, through our extensive network of foreign counsel). The registration process is intensive and it will typically take up to 18 months from filing to registration. Please see additional information regarding the U.S. Registration Process in our News & Resources section.
Because the international market is integral to our clients’ overall business strategy, MAVEN assists clients with navigating the international trademark system and developing a global, cost-effective strategy to extend the protection of their creative capital in the most practical way. While each country has specific trademark application requirements, the international prosecution process shares similarities with the U.S. registration process.
In the U.S., once the application is filed, the United States Patent and Trademark Office (USPTO) will review the application and assign it an application number. Upon reviewing a new trademark application, the USPTO’s examining attorney closely reviews every aspect of the application, including registerability of the mark, compliance with the U.S. Trademark Act and Trademark Rules, and procedural requirements. If, on examination, an examining attorney finds that the mark is ready for publication, the examining attorney initiates that process. If based on the examining attorney’s review, the application is not entitled to registration for any reason, she will issue an Office Action.
The Office Action typically supplies information as to how to correct whatever problems exist in the application and gives the applicant six months to respond. In the event of receipt of an Office Action, we will analyze the office action and provide you with a flat rate to prepare and file a response. If an Office Action is issued in connection with your application, we can assist and provide you with an assessment of your application and your chances of favorably overcoming the initial refusal.
It is important to keep in mind that if no response is filed within the statutory six-month period, then the application will be deemed abandoned. If a response is timely filed, the application will be re-examined in light of the applicant’s response. If the examining attorney finds that the requirements/ refusals were in fact met by the applicant’s response, she can then approve the mark for publication. If the examining attorney finds that there is at least one requirement or refusal which was not sufficiently addressed by the applicant, then the examining attorney may issue another office action refusing registration and/or making additional requirements as called for under the circumstances. Again, the applicant has another opportunity to respond. This procedure can continue until the examining attorney’s action is made final or until the applicant fails to respond.
Regardless of the bases for initially refusing to register your proposed mark, MAVEN is available to assist you.
MAVEN’s Domestic & International Trademark Filing Services include the following:
- Preparing intent-to-use, use-based, and Madrid Protocol International applications
- Working with foreign counsel to facilitiate other non-Madrid Protocol filings
- Reviewing your business materials to customize an identification of products / services that best describes your current use
- Reviewing your business objectives to determine an identification of products /services that adequately protects your intended uses
- Maintaining deadlines relating to your application and notifying you of action items
- Preparing statements of use in connection with intent-to-use applications
- Reviewing, analyzing and selecting best specimens