Management

Trademarks are pieces of property of value. As such, they need to be taken care of.

The management we offer at present is of two types:

Post Registration Management

Application Management

Post Registration Management

The post-registration management is usually carried out at the registrant’s request for the duration of the trademark registration to keep it in force. Trademarks are typically renewed every 10 years and can be renewed indefinitely. Depending on the country of registration, the management process may differ and require unique interventions.

For Federal USA trademarks, during the first 10 years of registration, it is mandatory to timely prepare and file specific documents with the USPTO within certain time windows. Namely, the Statement of Continuous Use between the 5th and 6th year from the date of registration, and the Statement of Continuous Use and Application for Renewal between the 9th and 10th year from the date of registration. Failing to file these documents causes the cancellation of the registration.

Remembering the above-described tasks, and the actual performance of them, may seem easy, but it is not. Another important document that can be filed during this time is the Declaration of Incontestability. This declaration renders the original application that matured into a registration incontestable under certain profiles and would prevent a third party from claiming/contesting some irregularities in the original application that could render it otherwise invalid. The attempt to challenge the regularity of an application/registration is usually made by the applicant for an application that might have been refused registration for likelihood of confusion with the registered mark.

Entrusting the management of a trademark registration to us, be it a U.S. or foreign trademark registration, would also allow a licensed law firm, where necessary, or a trademark specialist, where possible, to be of record for the registration in the intellectual property office of relevance and receive crucial communications regarding the registration from such office or third parties. This is VERY important as some communications may be misunderstood by laypeople, and the cost of missing a communication could be high, including the complete loss of trademark rights.

You can select the 10-year Post Registration Package from the top menu under the Management tab if available

Application prosecution and management

The application prosecution and management is a service that is offered to those that might have applied for registration of a trademark pro-se and need help prosecuting the application, or intend have a new attorney assuming the representation of the applicant before the government trademark office of relevance. It involves usually a study of the status of the trademark application and an assumption of legal responsibility for the trademark application by filing the relevant documents (usually a new power of attorney).
The application for registration prosecution and management can also involve some works such as a “response to an office action”, or other works like a “protest letter”, or other filings.
Typical U.S. application prosecution services are the Stetement of Use or a “Request of an Extension of Time to file the Statement of Use which include the docketing of the application untill it matures into registration. Such services are offered under the “Management” tab, and submenu tab “U.S. Trademark Management”.