World Intellectual Property Organization

United States Patent and Trademark Office (US)

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Miscellaneous

Nice Classification

The Office accepts only the headings in class 15 (musical instruments) and class 23 (yarns and threads for textile use). The USPTO maintains an “Acceptable Identification of Goods and Services Manual”, available on its website
http://tess2.uspto.gov/netahtml/tidm.html

Representation before the Office

Local representation is not required. However, any representative must comply with national regulations on representation before the USPTO.37 C.F.R. Part 11. See
http://tess2.uspto.gov/tmdb/tmep/0600.htm

Collective and Guarantee Marks

Regulations governing the use of the mark must be sent to the Office within the six-month period for responding to the Office action concerning same.

Replacement

Recording of replacement takes place upon request, filed with the Office. A fee of 100 USD per class is required. All rights are accrued. The USPTO database is updated and notated to show replacement. Requests may be filed electronically.
http://teasi.uspto.gov/

Transformation

The USPTO examines on relative and absolute grounds. The transformation filing fee is $375 per class if filed on paper and $325 per class if filed electronically.
http://teasi.uspto.gov/

Maintenance Requirement

Yes. Required to be filed between fifth and sixth year after issuance of Certificate of Registered Extension of Protection, before the expiration of tenth year after registration and all subsequent ten-year intervals from the date of the registration of the extension of protection. Please see USPTO website for details
http://www.uspto.gov/trademarks/law/madrid/Madrid_Tips_Sec71_Filers.jsp

Licenses

Under U.S. law, the recordal of a trademark license with the USPTO is not required.

Electronic Communication

The USPTO encourages the use of electronic communications. Holders are encouraged to provide and authorize use of electronic mail addresses to improve the efficiency of registration process. All relevant communications relating to requests for extension of protection are available online. For complete file contents, please see
http://tmportal.uspto.gov/external/portal/tow and for submission of electronic communications, please see
http://www.uspto.gov/teas/index.html for more information.

Last updated on: September 11, 2012

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