Trademarks - Filing Requirements


Filing Requirements
  • Power of attorney simply signed.
  • The basis of filing.
  • Specific description of the list of goods. General terms are not accepted.
  • Sample of the mark or the package to be used.
  • Certified copy of the priority document if claimed.

Notes
The above documents will be accepted if filed within 6 months with the payment of an additional fee.

The priority document can be filed within 3 months from the filing date.

Declaration of use or (excusable nonuse) should be submitted between the 5th and 6th years after the registration date. If the declaration is accepted, the registration will continue in force for the remainder of the ten-years period, calculated from the registration date, unless cancelled by an order of the Commissioner for trademarks or a federal court.

Declaration of Use or (Excusable Nonuse) and an application for renewal between 9th and 10th years after the registration date.

The basis of filing should be one of the following:

1- A use-based application (under Section 1(a) of the Lanham Act, the U.S. federal law governing trademarks, codified at 15 U.S.C. § 1051(a)) may be filed if the applicant is using the mark in U.S. commerce.

2- An intent-to-use application (under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b)) may be filed if the applicant has a genuine intent to use the mark in the United States in the future; however, the mark will not be registered until the applicant proves use.

3- An application under Section 44 of the Lanham Act, 15 U.S.C. § 1126, may be filed by a foreign applicant who has a genuine intention to use the mark in commerce and who either has applied to register, or has registered, the mark in the applicant’s country of origin.

4- An application under Section 66 of the Lanham Act, 15 U.S.C. § 1141f, may be filed via the Madrid Protocol. This type of application is filed via an extension of protection from an International Registration with the World Intellectual Property Organization (WIPO). It is not filed with the USPTO directly.

Renewal Requirements
  • Power of attorney simply signed.

Search Requirements
  • No documents are required.

Assignment Requirements
  • Power of attorney signed by the assignee.
  • Deed of assignment document signed by the assignor and assignee.

Notes
  • Late filing of documents: not allowed.

It is possible to record an assignment on a pending application.

Merger Requirements
  • Power of attorney simply signed.
  • Merger agreement document signed by both parties.

Notes
  • Late filing of documents: not allowed.

Recordal of Change
  • Power of attorney reflecting the new name or address simply signed.
  • Certified copy of the certificate of incorporation or an extract from the commercial register reflecting the change.

Notes
  • Late filing of documents: not allowed.

License Requirements
  • Power of attorney signed by the licensee.
  • License agreement document signed by both parties.

Notes
  • Late filing of documents: not allowed.