USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
4.2 Trade Mark Register The US’s trade mark register is public and searchable at the US Patent and Trademark Office website. PTO web searches have technical limitations. Comprehensive commercial databases are available to search the federal and state records and common law usage. The trade mark register consists of two registers, the Principal and the Supplemental. The Sup - plemental Register is for marks that are capable of distinguishing source but do not do so today. Marks registered on the Supplemental Register, like those registered on the Principal Register, may be identified with the ® symbol and are protected against infringements and later-filed applications. Marks filed under the Madrid Pro - tocol and intent to use applications for which an amendment to allege use has not been filed are not eligible for the Supplemental Register. The Principal Register contains all the benefits of federal registration referenced in 4.1 Trade Mark Registration . In addition to the federal register, states have state registers for trade marks filed for state trade mark protection. Some are publicly avail - able online, while others are not. 4.3 Term of Registration The registration term is ten years. Bona fide use of the mark in the US must be shown in connection with the goods or services identified in the registration by filing specimens for each class of goods or services covered by the registration between the fifth and sixth year of registration with a declaration attesting to the
use. There is a six-month grace period for late filings. A trade mark registration can be renewed any - time between the ninth and tenth year, with a six-month grace period. Renewal also requires the owner to attest to bona fide use and provide specimens as above. At the time of maintenance or renewal, the reg - istration can only maintain goods and services for which the trade mark is actually being used. Any goods or services not provided in com - merce must be deleted or the registration may be invalidated. The PTO may audit declarations of use and renewals and require the registrant to file addi - tional specimens. If the registrant cannot provide the additional specimens showing use of every item covered in the registration, the PTO will delete those goods and services from the regis - tration or even cancel the registration as a whole. Once a registration is cancelled, it cannot be revived unless there are extraordinary circum - stances. 4.4 Application Requirements The requirements to apply for the registration of a trade mark are: • Name and address of the owner. Only the owner of the mark may file. • Drawing of the mark. • Description of the goods and services with specificity using clear terms arranged by class. An application that seeks registra - tion for a general category will be asked to add specificity. Multi-class applications are permitted.
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