Examination (look for exceptions) Examination (look for §2 exceptions) Publication Publication Opposition (if brought) Opposition (if brought) Registration Statement of Use Post-Registration Requirements Registration Cancellation? (§14 w/in 5-years) Post-Registration Requirements Cancellation? (§14 w/in 5-years) General Bases under which you can file an application Actual use 1(a) Bona fide intent to use 1(b) Use/registration/application in a Paris Convention Country Forwarded application from Home Country Madrid Protocol if you’re a national of one country belonging to MP, you can file TM application in your home country and request your application be forwarded to the WIPO, and request that WIPO forward to other member countries asking them to register Forwarded application from home country under Madrid Protocol Advantages to Registration (Not required to Register) (Taken from §33) Provides prima facie evidence of validity, ownership, and registrant’s exclusive rights (§§7(b), 33) BB: easy to burst this bubble with some evidence Unclear how much weight courts actually place on §33 presumption of validity Establishes nationwide priority at time of application (§7(c)) Nationwide constructive use and constructive notice cuts off rights of other users of same or similar marks (§22) Start clock running for purposes of incontestability: after 5 years eliminates many defenses (§§15, 33), and limits on cancelation (§14) Registration procedures dependent upon basis under which TM is being registered Statutory Sections Basic Registration Actions: Unlike previous sections, registration is mainly statutory with some supplementation by PTO Registration requires examination in the US Lanham §1 (a) Use registration applications (b) intent to use (ITU) applications Requirements List of particular goods or services with which the applicant intends to use or has used the mark A drawing of the mark, except for registration of sound, scent or other non-visual marks A specimen showing the use of mark in connection with goods or services (NOT required for ITU §1(b), but must submit with statement of use a specimen!) Lanham §§7-9 Issuance of registration, duration, renewal Lanham §12-15 Examination and publication of pending applications; opposition and cancellation proceedings Lanham §22-27 Registration on the supplemental register Lanham §29-30 Notice, classification Lanham §33
Examination (look for exceptions) Publication Opposition (if brought) Registration Post-Registration Requirements Cancellation? (§14 w/in 5-years) Examination (look for §2 exceptions) Publication Opposition (if brought) Statement of Use Registration Post-Registration Requirements Cancellation? (§14 w/in 5-years) General Bases under which you can file an application Actual use 1(a) Bona fide intent to use 1(b) Use/registration/application in a Paris Convention Country Forwarded application from Home Country Madrid Protocol if you’re a national of one country belonging to MP, you can file TM application in your home country and request your application be forwarded to the WIPO, and request that WIPO forward to other member countries asking them to register Forwarded application from home country under Madrid Protocol Advantages to Registration (Not required to Register) (Taken from §33) Provides prima facie evidence of validity, ownership, and registrant’s exclusive rights (§§7(b), 33) BB: easy to burst this bubble with some evidence Unclear how much weight courts actually place on §33 presumption of validity Establishes nationwide priority at time of application (§7(c)) Nationwide constructive use and constructive notice cuts off rights of other users of same or similar marks (§22) Start clock running for purposes of incontestability: after 5 years eliminates many defenses (§§15, 33), and limits on cancelation (§14) Registration procedures dependent upon basis under which TM is being registered Statutory Sections Basic Registration Actions: Unlike previous sections, registration is mainly statutory with some supplementation by PTO Registration requires examination in the US Lanham §1 (a) Use registration applications (b) intent to use (ITU) applications Requirements List of particular goods or services with which the applicant intends to use or has used the mark A drawing of the mark, except for registration of sound, scent or other non-visual marks A specimen showing the use of mark in connection with goods or services (NOT required for ITU §1(b), but must submit with statement of use a specimen!) Lanham §§7-9 Issuance of registration, duration, renewal Lanham §12-15 Examination and publication of pending applications; opposition and cancellation proceedings Lanham §22-27 Registration on the supplemental register Lanham §29-30 Notice, classification Lanham §33