- Initial application forms and fees
- Applications based on Use in Commerce (Section 1(a))
- Applications based on Intent to Use (Section 1(b))
- Registration - Maintenance documents and fees
- Abandonment Fees
The cost of attaining a trademark varies depending upon the filing basis selected, and which initial application form is used. Every application must have a filing basis, and every filing basis has requirements that must be met for your application to proceed to registration. The two most commonly used filing bases are as follows:
- Use in commerce (Section 1(a) filing basis) – this filing basis means you have already started using your trademark (mark) in commerce. Commerce generally means the buying and selling of goods and services; and
- Intent to use (Section 1(b) filing basis)–this filing basis means you have not yet used your mark but have a bona fide intention to use the mark in commerce.
If you already know under which basis you will file, you can begin the process by selecting the appropriate initial application form. There are two initial application filing options:
If there are no pitfalls during the prosecution of an application based on Section 1(a), it will be published in the Official Gazette, then proceed directly to registration. There are no additional fees in this scenario unless the application goes abandoned for failing to respond to an Office Action. In order to obtain registration under this basis, you must:
- Provide a signed statement that you are using your mark in commerce.
- Specify the date that you first used your mark anywhere with your goods or services.
- Specify the date that you first used your mark in commerce with your goods or services.
- Submit one specimen for each class of goods or services in your application. A specimen is a real-world example of how you use your mark on your goods or services.
There are certain fees that apply to applications based on Intent to Use Section 1(b) that do not apply to applications based on Section 1(a). After applications based on Section 1(b) have been published in the Official Gazette, and no oppositions are filed, the Notice of Allowance (NOA) will issue.
A notice of allowance (NOA) is written notification from the USPTO that your trademark has survived the opposition period following publication in the Official Gazette. It does not mean that the USPTO has registered the trademark. Receiving a NOA is another step on the way to registration. NOAs are only issued for intent-to-use applications.
The NOA is important because the issue date of the NOA establishes the due date for filing a statement of use (SOU). After receiving the NOA, you must file an SOU or a request for an extension of time to file an SOU within six (6) months from the issue date of the NOA. If you fail to timely file an SOU or a request for an extension of time, your application will be deemed abandoned. The term abandoned means that the application is no longer pending and, thus, cannot mature into a registration. The application process will end, the trademark will fail to register, and the application fee will not be refunded.
If the USPTO has issued a notice of allowance (NOA) and you have not yet used your trademark on your product or in connection with your services, you will need to file an extension request. You must file an extension request within six months from the mailing date of the NOA or before the expiration of a previously granted extension. Late filed extension requests will be denied. You must pay a fee of $125 per class of goods or services for filing an extension request.
Before your trademark can be registered, you also must file an allegation of use (either an amendment to allege use (AAU) or a statement of use (SOU)) that states that you are using the trademark in commerce with your goods or services. The allegation of use must include the dates of use (both the date that you first used your trademark and the date that you first used your trademark in commerce), a filing fee ($100 per class), and one specimen of use for each class.
Should an application fall into an abandoned status at any time during the registration process, a petition fee of $100 is required to revive and resume prosecution of the application.
Once an application has matured to registration, you must timely file all required maintenance documents and continue to use the trademark in commerce (or show that special circumstances exist to excuse the nonuse of the trademark) with the goods or services in the registration in order to keep a federal trademark registration alive.
Between the fifth and sixth year of registration, you must file a Section 8 declaration. A Section 8 declaration is a signed statement filed by the trademark owner that either: (1) the trademark is in use in commerce with the goods or services listed in the registration; or (2) the trademark is not in use in commerce due to special circumstances that excuse nonuse. There is a fee per class of goods or services for filing a Section 8 declaration.
The USPTO will still accept Section 8 declarations for up to six months after the due date during a period called the grace period. Affidavits or declarations during the grace period must include an additional per class of goods or services.
Between the ninth and 10th year after registration, you must file a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 (combined filing). The USPTO forms combine the Section 8 declaration with the Section 9 renewal application. A Section 9 renewal application is a written request to keep your registration active. There is a fee per class of goods or services for filing a combined section 8 declaration and Section 9 application for renewal. There is a higher fee per class if you file during the grace period.
A combined Section 8 declaration and Section 9 application for renewal must be filed every ten years calculated from the date of registration. Failure to file required maintenance documents will result in the registration being cancelled or expired. The deadline to file maintenance documents is established by law and cannot be waived or extended. If your registration is cancelled, your only recourse is to file a new application with a new application filing fee.