1 Trademark registration requirements in United Arab Emirates: - Power of attorney legalized up to the United Arab Emirates Consulate; - Design of the trademark in JPEG format in case of a graphical trademark (not required for word mark); - The details of goods and/or services for witch the trademark will be registered or the classes in case they are known; - Details of the trademark owner (name, address, registration number); - Invoicing details (name, address, fiscal number, registration number); - Certified copy of priority document in case priority is to be claimed, United Arab Emirates Consulate. legalized up to the Trademark registration procedure in United Arab Emirates: The registration procedure lasts 12 months. The trademark will be published in the Trademark Journal and in 2 local newspapers. The power of attorney willl be legalized at the United Arab Emirates (UAE) Consulatess and super legalized at the UAE Ministry of Foreign Affairs in Dubai. Publication fees in TM Journal must be paid within 30 days for receiving notice of allowance. Registrations fees must be paid within 30 days form the date of expiration of opposition period. An opposition may be done within 1 month. The protection lasts 10 years from the filing date.
2 Trademark Process NOTE: Helpful Trademark electronic resources, such as "how-to" videos and Trademark FAQs, are available on the "Trademark Basics" page, and should be reviewed before starting the filing process. Initial Steps STEP 1: Determine whether you need trademark, patent, or copyright protection. STEP 2: Determine whether you should hire a trademark attorney. STEP 3: Identify your mark format: a standard character mark, a stylized/design mark, or a sound mark. STEP 4: Identify clearly the precise goods and/or services to which the mark will apply. STEP 5: Search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration. STEP 6: Identify the proper "basis" for filing a trademark application. STEP 7: File the application online through the Trademark Electronic Application System. View trademark fee information. REMINDERS: (1) The application fee is a processing fee that is not refunded, even if ultimately no registration certificate issues; that, is, not all applications result in registrations; and (2) All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, address, and street address. STEP 8: USPTO Reviews Application After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen. STEP 9: USPTO Issues Letter (Office Action) If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or (if the applicant has authorized communication by ). If the examining attorney sends an Office action, the applicant's response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned. STEP 10: Applicant Timely Responds to Letter If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO. STEP 11: USPTO Publishes Mark If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. STEP 12: Registration Certificate Issues for Applications Based on Use, Foreign Registrations, and International Registrations
3 A certificate of registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about eleven (11) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live. STEP 13: Notice of Allowance Issues for Marks Based on an Intent-to-Use the Mark If the mark is published based upon the applicant's bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight (8) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either: (1) Use the mark in commerce and submit a statement of use (SOU); or (2) Request a six-month extension of time to file a statement of use (extension request). A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have been filed based on an intent-touse a mark in commerce under Trademark Act Section 1(b). STEP 14: Applicant Files Timely Statement of Use or Extension Request The Applicant has six (6) months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. Please review the additional information for the statement of use and extension request processes. If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the notice of allowance and subsequent requests before the expiration of a previously granted extension. If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit an statement of use and the required fee(s) within 6 months from the date the notice of allowance issued to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed. >> File Statement of Use << >> File Extension Request << STEP 15: Applicant Does Not File Timely Statement of Use or Extension Request If the applicant does not file a statement of use or extension request within six (6) months from the date the notice of allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within two (2) months of the abandonment date. STEP 16: USPTO Reviews Statement of Use If the minimum filing requirements are met, the statement of use is forwarded to the examining attorney. The examining attorney conducts a review of the statement of use to determine whether federal law permits registration. The applicant cannot withdraw the statement of use and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the statement of use. If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately 2 months. If all issues are not resolved, the application will abandon. STEP 17: Registration Certificate Issues Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration "live," the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration. STEP 18: Monitoring Status
4 Throughout the entire process, you should monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system. It is important to check the status of your application every 3-4 months after the initial filing of the application, because otherwise you may miss a filing deadline. Please review the additional information on checking status to ensure you understand this important step in the overall registration process. STEP 19: Protecting Your Rights You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.
5 Trademark Fees (United States) Fact Sheets Review in Progress 1. What types of fees are associated with maintaining a trademark portfolio? As a company seeks protection of its trademarks through federal registrations, it must budget for filing fees charged by the United States Patent and Trademark Office (USPTO), as well as attorneys fees, internal costs and employee time within the company. 2. What are the government fees for filing a United States trademark application? The USPTO charges trademark application fees based on the number of classes of goods or services covered in the application. (See also Filing a Trademark Application in the United States). The specific classes into which goods and services will fall is determined by an international treaty called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the US Acceptable Identification of Goods and Services Manual published by the USPTO. The USPTO application filing fees range from $275 to $375 per class, depending on the format of the application, and how the application is filed. The requirement of a separate filing fee for each class applies whether or not an application is originally filed in multiple classes, or if one or more additional classes are assigned following the examination of the application by the USPTO. For example, if an applicant originally files an application in one class and is subsequently required to split the original recitation of goods or services into two classes, then the applicant must pay filing fees for both classes. These fees apply if the applicant files its application directly. If you seek assistance from an attorney, there will be additional fees. Trademark attorneys may provide valuable advice and guidance on trademark availability, use, the application and registration procedure, and your rights vis á vis others. 3. How can I pay the lowest filing fee for a trademark application filed in the United States? If an applicant uses the USPTO s TEAS Plus format for filing a trademark application online, then the applicant is charged a filing fee of $275 per class of goods or services. This is the least expensive method of filing a trademark application with the USPTO; however, certain requirements must be met. For example, the application must be complete at the time of filing, satisfying various USPTO requirements. The filing fees for all classes must also be paid at the time of filing. Moreover, the applicant must select the recitation of goods or services directly from the USPTO s Acceptable Identification of Goods and Services Manual. While certain customizations may be made, applicants must generally follow the Acceptable Identification of Goods and Services Manual if the application is filed using the TEAS Plus form. In addition, among various other requirements, the applicant must agree to use the USPTO TEAS electronic system to file office action responses and various other types of documents with the USPTO, and to receive communications regarding the application via . If any of these requirements are not met, either at the time of filing or thereafter, the applicant is no longer entitled to the $275 filing fee. Additional information regarding the TEAS Plus Rules and Regulations can be found online on the USPTO s website at 4. Are there situations in which a more expensive filing fee may apply? Yes. If an online application does not originally meet the USPTO TEAS Plus filing requirements, then the applicant is charged a $325 filing fee. While the standard TEAS filing fee is $50 more than the TEAS Plus filing fee, this may be preferable in some circumstances. For example, an applicant may choose a standard TEAS filing if it needs to include a customized recitation of goods or services rather than selecting from the USPTO s Acceptable Identification of Goods and Services Manual (e.g., if the goods or services are particularly unique), if it does not yet have all of the information to satisfy the requirements of the TEAS Plus form, if it is unwilling or unable to pay for each class of goods or services up front in a multi-class application, if it plans to subsequently file communications
6 in paper rather than electronically, or if it does not agree to receive subsequent communications from the USPTO via Is there a different filing fee if a trademark application is filed in a paper format, rather than online? Yes. If an applicant files a trademark application in a paper format with the USPTO, rather than using the online USPTO TEAS service, then it is charged a $375 filing fee. The higher fee associated with a paper filing reflects the USPTO s move toward an electronic filing system, in which online trademark filings are encouraged. 6. Does the USPTO charge other fees after the application is filed? Yes. The USPTO charges other fees for intent to use applications, including a $100 fee per class for filing a Statement of Use or an Amendment to Allege Use and a $150 fee per Class for extensions of time to file a Statement of Use. Unlike some trademark offices around the world, the USPTO does not charge a separate fee for the original issuance of a trademark registration. The USPTO also charges fees to maintain issued registrations, including $100 per class for filing evidence of continued use (referred to as a Section 8 Affidavit), $200 per class for filing a Section 15 Affidavit for incontestability, and a $400 per class fee for renewals. These and other trademark related fees are subject to change, as reflected with updates from time to time on the USPTO website. 7. What methods of payment are accepted by the United States Patent and Trademark Office? USPTO fees may be paid via any one of the following methods: a check, cashier's check, a money order, a credit card, an electronic funds transfer (EFT) from United States bank accounts, or an authorization to charge a deposit account established with the USPTO. EFT payments can only be processed from United States bank accounts. If a payment is made from a country other than the United States, such payment must be payable and immediately negotiable (in U.S. dollars) in the United States for the full amount of the fee.
7 Filing a Trademark Application in the United States Fact Sheet Review in Progress The U.S. Patent and Trademark Office (USPTO) encourages online filing via the TEAS (Trademark Electronic Application System) on its website at Over 95 percent of trademark applications are filed electronically. 1. What types of applications may be filed? The USPTO accepts applications for registration of both traditional marks (word, design and combination marks) and nontraditional marks (color, shape, sound, scent, touch and motion marks), as well as for collective marks and certification marks. Word Mark ( standard character drawings) All letters and words in the mark are depicted in Latin characters; all numerals in the mark are depicted in Roman or Arabic numerals. The mark includes only common punctuation or diacritical marks and does not include a design element. Design Mark (stylized wording and/or design) The image must be in.jpg format; scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length of no less than 250 pixels and no more than 944 pixels and a width of no less than 250 pixels and no more than 944 pixels. Color Mark The applicant must submit substantial proof of acquired distinctiveness and the logo in color, accompanied by a color claim naming the color(s) that is/are a feature of the mark and a separate statement describing where the color(s) appear(s) in the mark. Shape (Configuration/Three-Dimensional) Mark (the shape and design of a product) The applicant must include a description of the mark indicating that the mark is three-dimensional and a drawing that depicts a single rendition of the mark. Sound Mark The file must be in.wav,.wmv,.wma,.mp3,.mpg or.avi format and should not exceed 5 MB in size for audio files and 30 MB for video files. The applicant must provide a detailed description, including any words or lyrics, of the sound. Scent Mark The applicant must submit substantial proof of acquired distinctiveness; a detailed written description (no drawing is required); and a specimen of the fragrance. Touch Mark The mark must be represented graphically. Motion Mark The drawing may depict either a single point in the movement or up to five freeze frames showing various points in the movement. The applicant must also provide a detailed description of the motion. Collective Membership Mark used by the members of a cooperative, an association, or any other collective group or organization. Certification Mark any word, name, symbol and/or device used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such person s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. See also Certification Marks. 2. What is the basis for filing a trademark application? A use-based application (under Section 1(a) of the U.S. federal law governing trademarks, known as the Lanham Act) may be filed if the applicant is using the mark in U.S. commerce.
8 An intent-to-use application (under Section 1(b) of the Lanham Act) 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. A Section 44 application 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. A Section 66 application 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. See also Madrid Protocol. An application may also claim filing bases under any combination of Sections 1(a), 1(b) and What are the requirements to obtain a filing date? The name of the applicant; A name and address to which the USPTO should send correspondence; A clear drawing of the mark (as described in #1 above for design and other nontraditional marks); A listing of the goods or services; Designation of Domestic Representative for foreign applicants; and The filing fee for at least one class of goods or services. A filing fee for one class of goods and/or services covered by the application is required, and fees for additional classes can be submitted after filing. You may verify the current per class filing fee by checking the USPTO website. Fees may vary depending on how the application is filed. See also Trademark Fees (United States) Fees for International Registration Applications Under the Madrid Protocol 4. What additional requirements must all applications meet to proceed to registration? Information about the applicant: 1. If the applicant is not an individual, applicant s legal entity type; and 2. Citizenship or state or country of incorporation. The basis of filing (as described in #2 above). A verified statement. The following persons may sign an application: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; (3) an attorney who has an actual or implied written or verbal power of attorney from the applicant. For marks other than standard character word marks (as described in #1 above), a description of the mark. When applicable, an English translation or transliteration of any non-english words in the mark. Any unpaid filing fees for additional classes. 5. What additional requirements apply to use-based applications?
9 The applicant must provide certain dates related to the use of the goods and services in the application before it can register. For goods, this is the first date that goods bearing the mark were sold or transported; for services, this is the date on which services promoted under the mark were first rendered. Two dates for each class of goods and services are required: (i) the date of first use anywhere, and (ii) the date of first use in interstate commerce or commerce that the U.S. Congress may regulate. For many applicants, these dates will be the same. The dates may be as specific as a particular date (e.g., May 1, 2013) or as general as a year (e.g., 2013). The applicant must also submit a sample of the mark called a specimen of use showing the mark as it is actually used in commerce in connection with at least one item in each class of goods and services. Acceptable specimens for trademarks include packaging, labels or tags for the goods. Examples of acceptable specimens for service marks are advertisements and promotional materials for the services, including pages from the applicant s website. 6. What additional requirements apply to intent-to-use applications? An applicant must have a bona fide intent to use the mark in commerce for all goods and services in the application. The lack of a good-faith intent can be used to challenge the validity of the application or resulting registration or can be used as a defense in adversarial proceedings. Therefore, an applicant should keep documentary evidence of its plans to use the mark in case it is needed later. Before the application will proceed to registration, the applicant must demonstrate to the USPTO that the mark is in use in U.S. interstate commerce and supply a specimen of use for each class of goods and services. This document is called an Amendment to Allege Use or a Statement of Use depending on when it is filed. Either document must (i) attest that the mark is in use in commerce by the applicant or its licensee; (ii) state the dates of first use anywhere and in U.S. interstate commerce for each class; (iii) include a specimen for each class along with a description of the specimen; and (iv) include the requisite fee for each class. A U.S. trademark lawyer can advise an applicant of the timing requirements involved in submitting allegations of use, what constitutes adequate use in commerce and acceptable specimens, and the options available when the mark is not in use with all goods and services in the application. 7. What happens after the application is filed? The USPTO will issue an official filing receipt by if filed electronically or by mail if filed on paper. A serial number will be assigned and the details of the application should appear on the USPTO s website within 14 days of filing. The progress of the application may also be tracked on this site. An application is typically examined three to four months after filing. If the USPTO examiner objects to registering the mark on substantive grounds (such as a likelihood of confusion with other marks on the USPTO register or that the mark is descriptive), or raises informalities that must be addressed before the application can proceed (such as requiring amendments to the goods or services or requiring a disclaimer of generic words), an Office Action will be issued specifying each objection. The applicant must respond to the Office Action within six months of its mailing date or the application will go abandoned. Once these issues are resolved, or if the examiner does not raise any objections, the application will be approved for publication in the Official Gazette and a Notice of Publication will be issued listing the publication date. Any third party that believes it will be harmed by the registration of the mark may oppose the application, or file a request for an extension of time to oppose, within 30 days of the publication date. If the application is not successfully opposed, the USPTO will issue a Certificate of Registration for use-based applications under Section 1(a) and applications under Sections 44 and 66, or a Notice of Allowance for intent-touse applications under Section 1(b). An applicant has 36 months from the Notice of Allowance date to submit proof of use, known as the allowance period, or the application will go abandoned. Every six months during the allowance period, the applicant must file either a Statement of Use or a request for extension of time to file a Statement of Use indicating a continuing bona fide intent to use the mark for the goods and services in the
10 application. Once the USPTO accepts the Statement of Use, the Certificate of Registration will be issued. 8. How long does it usually take for an application to mature to registration? Generally it takes around 12 months for a registration to issue if no substantive objections are raised and/or no oppositions are filed and all documents are filed electronically. The process can take much longer if Office Actions are issued, necessary documentation is not yet available (such as a foreign registration), the application is opposed or documents are filed on paper.
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