Fequently Asked Questions
Trademarks
What are the basic filing requirements for obtaining a trademark filing date in the United States for either a convention or a non-convention filing?
The basis filing requirements, in order to filing a U.S. trademark application, are:
1) The full legal name(s) and the complete address of the Applicant;
2) An identification of the mark to be covered by the trademark application—whether the mark is to be registered in block letters, in a stylized format, including a design feature, etc.
3) A complete listing of each international class in which the mark is to be registered.
4) A complete listing of all of the goods and/or services to be covered by the mark—please note that after filing a trademark application, the identification of goods and/or services of the application can not be amended to add any additional goods and/or services but only may be amended to cancel or clarify the listed goods and/or services.
5) An identification of each basis or bases for registration, namely, whether the application is to be based upon actual use, an intent to use the mark, on a foreign application in the country of origin of the Applicant or a foreign registration.
6) A power of attorney in favor of our firm;
7) A declaration indicating that the Applicant believes that all of the facts set forth in the trademark application are true and accurate—one of our attorneys can provided such declaration provided that the Applicant avers that all of the statements, which are made in the trademark application that is prepared and forwarded to the Applicant for review and approval, are correct and accurate.
Must the trademark application be signed by the Applicant?
A: No, the trademark application can be filed the one of our attorneys provided that the Applicant avers that all of the statements, which are made in the trademark application that is prepared and forwarded to the Applicant for review and approval, are correct and accurate. We generally files U.S. trademark applications electronically as soon as practical after receipt by our office.
Is a certified copy of the priority application required at time of filing?
A: No, a certified copy of any priority application(s) is not required to be submitted to the United States Patent and Trademark Office. However, the Applicant is required to submit a certified copy of the corresponding registration which issues from such priority application(s) in order to prefect the priority claim. Please note that if the U.S. trademark application is otherwise in a condition for publication, further prosecution of the application will be suspended until the necessary certified copy of the corresponding registration(s) is submitted to the United States Patent and Trademark Office. Alternatively, if the trademark application also claims one or more additional bases for registration, e.g., an Intent to Use the mark, Use, etc., the claim to the foreign application may be canceled, if desired.
Is there an official fee for late filing of a certified copy of the priority document?
A: There is not any official fee associated with submitting a certified copy of any corresponding registration(s) to the United States Patent and Trademark Office. However, our firm will bill for the associated services in connection with submitting the certified copy of the registration to the United States Patent and Trademark Office.
Can a trademark application be assigned?
A: Yes, it is possible to assign a trademark application prior to issuance of the registration as long as the associated goodwill, in connection with the mark, is also transferred by the Assignee to the Assignee. Assignment of an Intent to Use application are complicated—please contact our office for advice concerning how to assign an Intent to Use application.
Is there a surcharge for late filing of the trademark assignment?
A: No, there is not any surcharge associated with late filing of the Assignment or any other document to be recorded with the United States Patent and Trademark Office. However, there is an associated recordal fee per document to be recorded with the United States Patent and Trademark Office.
Must any foreign language Assignment be accompanied by an English language translation thereof?
A: Yes, each foreign language trademark assignment, or other document affecting title of the registration(s) and/or trademark application(s), must be accompanied by an English language translation thereof, preferably a Verified English translation thereof. To simplify conveyance of intellectual property, many clients request our office to prepare and forward a suitable Assignment for review and signature by the necessary parties. In order for our office to attend to the same, please provide our office with the complete legal names of the Assignee(s) and each Assignor(s), the complete addresses for all involved parties, the type of entity of each party (e.g., individual, corporation, partnership, joint stock company, etc.), and specifically identify each intellectual property to be assigned. Our office will then prepare and forward a suitable Assignment for review and signature by the necessary parties.