An extension to file a Statement of Use (“Extension”) allows a trademark an additional six months to file their statement of Use. By requesting an extension, The USPTO will allow an applicant an additional 6 months to respond to a Notice of Allowance before the trademark is considered abandoned.
You may file up to five extensions. You have six months from the date you receive a notice of allowance to file the statement of use, plus a maximum of 30 additional months from the five extensions. In total, you can protect your brand for up to three years from the date you receive a notice of allowance from the USPTO, allowing plenty of time to develop and market your brand while still offering trademark protection
Conduct an online trademark search for your trademark registration availability.
Fill out a simple questionnaire. Experienced attorneys give legal advice, prepare and file your trademark to the World Intellectual Property Organization.
US Legal League does the rest. All processes will be performed in a timely manner. We will keep you up to date with automated reminders.
Still have questions? Contact Us for real-time support.
The Madrid International Trademark System is a centralized management system simplifies the registration of a trademark.
One application in one language generates a bundle of applications in multiple languages through independent trademark offices covering almost 80% of trade around the world. The WIPO currently has 105 members, covering 121 countries and includes the European Union (EU), and African Intellectual Property Organization (OAPI)
Stage 1 – Application through your National or Regional IP Office (Office of origin)
Before you can file an international application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark . You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.
Stage 2 – Formal examination by WIPO
WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send a certificate of the international registration and notify the IP Offices in all the territories where you wish to have your mark protected.
Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)
The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.
Searching existing trademarks is a necessary first step. If your trademark infringes on another person’s IP rights or doesn’t comply with local laws, you may not be able to register it.
WIPO and national/regional IP Offices provide databases that can help you find out if a mark similar to yours is already in use for the same or related goods and services.
If you Discover a Similar or Identical Mark, discovering an identical or similar mark prior to filing may be preferable to finding out afterwards. This knowledge will enable you to make appropriate filing decisions. It is important to determine if the identical or similar mark:
If the identical or similar mark is for unrelated goods and/or services, you may decide to proceed with your application. Similarly, if the application has lapsed or the registration has expired, you may also wish to proceed.
Of course, you may also elect to proceed with your application even if there is an earlier application or registered mark in a Contracting Party of interest for the same or related goods and/or services. You should be aware that in such a case a provisional refusal may be raised by the concerned Office of a designated Contracting Party, on the basis that the mark conflicts with an earlier pending or registered mark. There are several ways to overcome this type of refusal, but a local representative in the Contracting Party may be necessary to respond to the provisional refusal.
In order to file an international application, you must have already registered or applied for a mark in your “home” IP Office. The International Trademark Registration Process:
The Madrid System is an international filing and registration system. WIPO performs a formalities examination only.
The IP Office of each Contracting Party (member) designated in your international application will determine the scope of protection of your mark, after conducting its own substantive examination.
Stage 1: Submission of international application through your Office of origin
Once you have applied for or registered a domestic mark with your Office of origin (in other words, once you have obtained a “basic mark”), you can file an international application under the Madrid System. This application must be submitted to your Office of origin, which will certify it and then submit it to WIPO.
Stage 2: Formalities Examination by WIPO
WIPO examines your international application for formalities only. This means that it does not refuse or grant protection. It simply checks the information presented in your international application, in particular: the applicant’s name and address, the quality of the image of the mark, that at least one member is designated (which cannot be the member where you filed your international application), that the list of the goods and services is classified according to the Nice Classification, and payment of the required fees.
Possible outcomes
WIPO issues an irregularity notice (application does not comply with formal requirements)
– If your international application does not comply with the applicable formal requirements (for example, if any of the required information is missing, such as applicant’s details or if the image of the mark is unclear), WIPO will send an “irregularity notice” to you and to your Office of origin. This notice will identify the problem (the “irregularity”), explain how to correct it within a given time limit (usually three months), identify who should remedy the problem (depending on the irregularity, this can be the Office of origin or you, the applicant), and indicate what will happen if the irregularity is not remedied.
WIPO records and publishes your mark (application complies with formal requirements)
– If your international application contains all the required information and there are no irregularities, WIPO records the mark in the International Register and publishes it in the WIPO Gazette of International Marks, and notifies the Office of each member designated in your international application. At this stage, you become the holder of an international registration.
– WIPO will then send you a Certificate of Registration for your mark.
Please note that this certificate is not equivalent to a certificate from a national or regional Office, informing you of a domestic registration. At this stage, the certificate from WIPO is merely an acknowledgement of compliance with WIPO’s formal requirements . The scope of protection for your mark is not known at this stage, and will ultimately depend on the outcome of the substantive examination conducted by Offices of the members designated (at the next stage).
Stage 3: Substantive examination by each national/regional Office
After WIPO has recorded your mark in the International Register, it will notify all the Offices of the members that you have designated in the international application (also referred to as “Offices of designated Contracting Parties”) so that these Offices can begin their substantive examination.
The Office of each designated Contracting Party conducts substantive examination of the mark that is the subject of your international registration, in the same way it examines national/regional applications and in accordance with its domestic laws. A decision on the scope of protection will be made within 12 months (or 18 months, for certain members) from the date WIPO notified the Office of its designation.
