Page 75 - Akerman | 2016 Guide to Doing Business in Florida

(d) Federal Registration Application Process. 15 U.S.C. § 1051, et seq. Federal
trademark registration requires that a trademark application be filed with the
U.S. Patent and Trademark Office. The application must identify the mark and
the goods with which the mark is used or is proposed to be used, the date of
first use, and the manner in which it is used. The application must be
accompanied by payment of the requisite fee, a drawing page depicting the
mark, and three specimens of the mark as it is actually used. After the
application is filed, it is reviewed by an Examining Attorney who evaluates,
among other matters, the substantive ability of the mark to serve as a valid
mark and the possibility of confusion with existing marks. If the examiner
rejects the application, the examiner’s decision can be appealed to the
Trademark Trial and Appeals Board. An adverse decision by that body can be
appealed to federal court.

If the application is approved, the mark is published in an official publication of
the Patent and Trademark Office. Opponents of the registration have 30 days
after publication, or such additional time as may be granted, to challenge the
registration. If no opposition is raised, or if the opponent’s claims are rejected,
an applicant whose mark is already in use receives a “certificate of
registration.”

An applicant whose trademark is proposed for registration before actual use
receives, upon approval of the application, a “notice of allowance.” An
application who receives a notice of allowance must within six months of the
receipt of the notice furnish evidence of the actual use of the trademark. The
applicant then is entitled to a certificate of registration. Failure to furnish
evidence of the actual use of the mark within the time allowed results in
rejection of the application. The time period for proving actual use can be
extended for up to three years.

(e) Post-Certificate Federal Procedures. A certificate of trademark registration
issued by the Patent and Trademark Office remains in effect for 10 years.
However, registration expires at the end of six years, unless the registrant
furnishes evidence of continued use of the trademark. The initial 10-year term
of a certificate of registration can be renewed within the term’s last six months
for an additional 10-year term by furnishing evidence of continued use of the
mark and paying a fee.

After at least five years of continuous use of a trademark following the receipt
of a certificate of registration, a registrant can seek to have the status of the
trademark elevated from “presumptive” evidence of the registrant’s exclusive
right to use of the trademark to virtually conclusive evidence of an exclusive
right. To do so, the registrant must furnish the Patent and Trademark Office
with evidence of continuous use of the trademark for at least five years.
Additionally, there must not be any outstanding lawsuit or claim that
challenges the registrant’s rights to use the mark.

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