Protecting the brand name of your product is often a vital part of launching a new product. Unlike patents and copyrights that have a finite term, a trademark continues for as long as you use the mark in connection with the product. Years later, a trademark with its good will, is often the most important asset of a business. At FOXPATENT, we work with our clients to develop and register strong trademark rights.
In the United States, rights to a trademark are created by use of a mark in connection with goods or services. A mark can be unregistered or registered. An unregistered mark is protected by Section 43(a) the Federal Lanham Act. A mark can be registered by filing a federal trademark application with the U.S. Patent and Trademark Office (USPTO) based upon an intent-to-use or actual use of a mark. Registration of a mark provides several advantages over unregistered marks, including a presumption that the mark is inherently distinctive and has a date of first use as stated in the registration. At FOXPATENT, we electronically file and prosecute all federal U.S. trademark applications. Prior to filing a trademark application, we suggest conducting a trademark availability and clearance search. An U.S. trademark registration has a term of ten (10) years. In order to keep the trademark registration in force for the full term, a statement of use must be filed between the 5th and 6th year from the date of registration. Thereafter, an U.S. Trademark Registration may be renewed for additional ten (10) periods by filing a renewal application. The government filing fee for a trademark application is $325. A typical trademark application is examined within six (6) months from its filing date. Upon examination and approval by USPTO, the mark is published for opposition. In the case of an used-based application, if an opposition is not filed within thirty (30) days from the date of publication, a certificate of registration will be issued by the USPTO without further action or fees. In the case of an intent-to-use application, if no opposition is filed, the USPTO will issue a Notice of Allowance. In order for a certificate of registration to issue, a statement of use must be filed along with a government filing fee of $100. In most cases, a federal U.S. trademark registration can be procured at a low cost. At FOXPATENT, we provide an all inclusive flat fee for preparing, filing, and prosecuting a federal U.S. Trademark Application. In the case of an intent-to-use application, we provide an additional all inclusive flat fee for preparing and filing a statement of use.
Unlike U.S. law, most foreign countries have a first to file registration system. This means that any person can register a trademark without having to submit any evidence of use or an intent-to-use the mark in that foreign country. With many products manufactured abroad, a company may wish to avoid a situation where a third party obtains a foreign registration and obtains an injunction stopping the export of product to the United States. To avoid this problem, a company selling product in the United States should consider registration of the mark in the country where the product is manufactured. The cost of a foreign trademark application is minimal compared to the costs of lost product, an injunction at customs, and foreign litigation. Under international law, a foreign trademark application is entitled to the filing date of the U.S. trademark application provided that the foreign trademark application is filed within six (6) months from the filing date of the U.S. trademark application