We’re grabbing up another trademark for a client, out from underneath both an existing trademark owner and another applicant. And we’re doing it completely by the rules, with the use of a little patient watching.
Skipping to the chase, many trademark applicants and practitioners do not realize that there are NO EXTENSIONS of time to file affidavits of continued use (Sections 8 and 9 of the Lanham Act), or to respond to trademark office actions (rejections or objections by the trademark examining attorney). This failure to strictly observe time limits may be due to the fact that many of those practicing intellectual property law are most familiar with the laws and procedures of the patent office. The patent office has been jokingly called the “last bastion of pure capitalism,” because almost any time limit can be extended by the payment of a penalty fee. It’s really easy to get used to rolling over office actions for an extra 30, 60, or even 90 day period when things are busy. Even in the worst case, when a patent is accidentally allowed to go abandoned, there are procedures and, of course, the payment of a fee, for their revival.
But the law is very clear and very harsh in regard to trademark filings. An affidavit of use (Section 8) must be filed during the one year period between the fifth and sixth year’s anniversary of the trademark registration. An affidavit of continued use (Section 9) must be filed during the one year period between the tenth and eleventh years following the trademark registration anniversary. Filing in the last half of the year-long windows will require an extra fee. This makes for a bit of an awkward progression, as it results in filings being due at five years, then ten years, then twenty years, etc. It’s very easy to forget that the first Section 9 filing is due only five years after the initial Section 8. The day after the one-year filing period ends, the registration is abandoned, and goes up for grabs to another qualified applicant.
The same strictness applies to trademark application office actions. When the trademark examining attorney makes an initial rejection or objection, the applicant has exactly six months to respond, and unlike with a patent office action, the examining attorney has no power to extend the response time. Again, the day after the six-month period expires, the application is abandoned.
The obvious take-away for those with trademark registrations or pending applications is: There are NO TIME EXTENSIONS for trademark affidavits of use filings or office action responses. (There are petitions to revive an inadvertently abandoned registration or application; but these are not always granted and are an entirely other subject in itself.)
There’s a less obvious take-away for those who have pending rejections or objections to their trademark applications, and you must make sure that you or your attorneys are on top of this.
When a trademark application receives a rejection based either on an existing registration (Likelihood of Confusion) or an already-filed application (Potential Likelihood of Confusion), the first step must be to examine the cited prior registration(s)/application(s) to find out the Section 8 or 9 due dates for an existing registration, or the Office Action return due date, in the case of a prior-filed application. These dates must be docketed and followed to see if the registrant or prior applicant makes the required filings in time. If they don’t, the registration/application is abandoned, and the rejection of your application may just go up in smoke. That is, if you act fast. If the previous registrant or applicant wakes up before you file a response indicating the abandonment, they can refile their application and once again get ahead of you. A single day can make all the difference in the world.
Think about this especially if you are using a cut-rate internet trademark application service, especially those that brag of filing “thousands” of applications. Are they doing the watchful waiting that can snatch up a trademark? If they’re not, we hope you are. Now are we really “stealing” a trademark? Not really, just playing by the rules. In the matter we are referring to, we found that a trademark registrant had failed to file their Section 9 affidavit, and an entirely different prior applicant had failed to respond to an office action, thus clearing the way for our client. Maybe the others really had lost interest in their mark or their application. But maybe they, or their lawyers, just weren’t watching carefully. That’s a high price to pay for inattention.