Filed trademark as itu, didn't submit forms

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I filed for a trademark as itu , didn't submit itu form before approved for publication. What do I do now?

Attorney Answers

6
Matthew Pek ·
Contact the Examining Attorney at the USPTO (or just the USPTO itself online) and locate the appropriate Petition for relief (most likely this will require a discretionary extension of time, which, depending on the specific posture of your ITU application, and the date is was published in the Official Gazette, compared with the the dates of all other pertinent USPTO notices which needn't all be named here - these are more often than not routinely granted especially on the first go but ultimately at the discretion of the Examining Attorney at the USPTO assigned to your case. Call the USPTO Trademark customer service line, if not your Examining Attorney directly, presuming as I must that by now (ie, publication in gazette having been approved, etc.) you have such person's contact info, and contact them directly, explain your situation/oversight, and they will direct you to the appropriate (in all likelihood) "Petition for..." certain relief, which here I must suspect to be an extension/continuance, which, in my experience in filing marks with the USPTO, are more often than not fairly perhaps liberally granted - most often by 6 month intervals of extension / continuance / adjournment. Hope this helps. Best, Matthew A. Pek
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Bryan Bockhop ·
Do you mean that you did not submit the Amendment to Allege Use within the six month period after publication? If so, you can refile the application, losing the filing date of the original application. Confer with a trademark attorney to determine your next step.
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Daniel Thomson ·
You will need to speak to an IP attorney to have them review your application to provide the best next step.
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Daniel Ballard ·
I don't understand your supposed problem. Other than the application itself, there is NO form you need to file before your intent-to-use application is published. You filed an application to register a trademark under the intent to use provision. The Examining Attorney has apparently approved the application for publicaton. That's what you WANT to happen. After you start actually using the mark in commerce, but not before the 30 day publication period ends, you can then file a Statement of Use. You REALLY need to speak with your own trademark attorney -- not only about these registration procedural matters but more fundamentally about your company's branding as a whole. Good luck.
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Eric Kelly ·
Note, if you have not done so already, you really should properly clear use of your proposed trademark before you adopt use of the trademark. Your question suggests some fundamental misunderstandings about trademark law, when then suggests to me that is doubtful that the proposed trademark was properly cleared. If you do not clear use of the proposed trademark, you may find yourself in some expensive litigation that could have been avoided with a proper clearance search and analysis. And this litigation could happen irrespective of what happens with your intent to use registration application - as the searching that a USPTO examining attorney performs is limited to potential confusion with entries in the TESS database only, i.e. the USPTO examining attorney will not both searching for common law sources of marks and tradenames.
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Joseph Dreitler ·
talk to a trademark lawyer who can determine if you blew the date for filing the SOU or just file the AAU. Big difference in what happens and how to deal with it.
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