- Recordation Form Cover Sheet
- Registered Mark
- Related Company
- Representation Of Mark
- Request For Extension Of Time To File A Statement Of Use: Extension Request
- Request To Reinstate An Application
Recordation Form Cover Sheet:
USPTO form that trademark owners use to record trademark assignments (changes in ownership of marks for applications and registrations) and a trademark owner’s change of entity name. The form is PTO-TM-1594.
A person owning a federal trademark registration, including legal representatives, predecessors, successors, and assigns of such registrant.
A mark may be considered to be a trademark without being registered. To achieve “registered” status a trademark owner must file the mark, symbol or designating emblem with the USPTO according to their guidelines and pay the registration fee.
Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark. Although federal registration of trademarks is not required to use a trademark, owning a federal trademark registration has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, the ability to bring an action concerning the mark in federal court, the use of the U.S. registration as a basis to obtain registration in foreign countries, and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
The term “related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used. If a trademark is used by a related company, rights inure to the benefit of the owner of the mark. The key word here is “controlled.” If a company is 100 percent owned, it is controlled. Otherwise, a license agreement with quality control provisions is required to show the right of control.
Trademark registrations last as long as they are maintained. Renewal is required every ten years. The owner pays a fee and provides proof of use during the six-month period before the expiration of the term, or by paying an additional fee, within three months after the expiration date.If the renewal is not made, the registration will lapse. However, this doesn’t mean the trademark is abandoned. If the mark is still in use, the party will still have common law usage rights. If desired, the same or another party can register, since trademarks, unlike patents, are recyclable, and rights can be created anew.
Representation Of Mark:
A clear depiction of the mark an applicant seeks to register. Every application must include a representation of the mark. The USPTO uses reprentations of marks to file marks in the USPTO search records and to print marks in the Official Gazette (eOG:T) and on registration certificates. For TEAS applications, if the mark is in standard character form, a separate page depicting the mark is not required. If the mark is special form, (i.e., includes a design or stylized lettering), the applicant must attach a digitized image of the mark in .jpg format to the electronic submission.
Request For Extension Of Time To File A Statement Of Use: Extension Request:
A sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee per class of goods/services must accompany the Extension Request. The Extension Request, if granted, gives the owner an additional six (6) months to either: (1) use the mark in commerce and file a Statement of Use; or (2) file another Extension Request.
You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the issue date of the Notice of Allowance. The USPTO will not register a mark if, after thirty-six (36) months of the issue date of the Notice of Allowance, a Statement of Use has not been filed.
Request To Reinstate An Application:
If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO. For a list of evidence that may be considered in support of a request for reinstatement.