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Trademark Process: Obtaining and Keeping a U.S. Trademark


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: August 21, 2011 @ 3:39 pm
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When seeking to obtain a United States trademark there are a number of different steps to the process, and even after the trademark has issued there are several key events that must be planned for in order to continue to maintain the trademark in good standing. Before moving forward to elaborate it is vitally important to understand that once you file a trademark application it will be necessary to promptly respond to any inquiries made or issues raised by the Trademark Office, which will come from a trademark examining attorney.  Likewise, to preserve the trademark in good standing there will be additional steps that you must take after the trademark has issued.

1.         Search of prior trademarks and pending applications

Prior to filing a trademark application, it is always advisable to conduct a search of prior trademarks and pending trademark applications to determine whether any person or company is using a particular trademark.  Not all trademark searches are equal though, and prices vary greatly if you are going to hire a professional to search.  The variation is due to the scope of the search.  Are you going to search all available databases and the Internet to see if anyone anywhere is using a similar name, or are you just going to search the U.S. Patent and Trademark Office database of trademarks.

A no stone unturned, all-database search will produce far more information that will be considered by the Trademark Office in reaching a determination about whether your trademark can be registered.  This is true because the Trademark Office only searches registered U.S. trademarks and pending U.S. trademark applications.  The Office does not search state trademarks, common law trademarks, or the Internet during the examination process.  Thus, most trademark applicants search only the USPTO database.  Nevertheless, you should probably do at least some kind of Internet search yourself prior to selecting a business name or trademark in order to determine whether the trademark you want to use (or a close proximity thereto) is being used by others who have not filed a trademark application.

The primary reasons for suggesting that you take into consideration more than the trademark examining attorney will consider is primarily business driven.  You simply may not want to obtain a trademark when there are other unregistered uses of the mark or a similar variation of the trademark.  Those other uses will largely be allowed to continue even if you do obtain a trademark.  The trademark you may obtain will provide you the right to prevent others from adopting the same or similar trademark, and prevent unregistered existing users from expanding geographically.  Whether you will be satisfied given these other alternative uses, therefore, becomes a personal question, not a legal question.

Of course, in today’s business world it probably goes without saying that you should select a trademark that gives you the ability to obtain a suitable “dot com” domain name.


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2.         Filing of trademark application

Federal registration of a trademark, assuming there are no major difficulties during the examination process, normally takes approximately 12 months, but can be longer particularly if the trademark examining attorney identifies issues that must be addressed.  The application you will be filing will seek registration on what is called the “Principle Register.”  The Principle Register is where trademarks marks that are considered “fanciful”, “arbitrary” or “suggestive” are registered.  Fanciful, arbitrary and suggestive trademarks are the most strong and what you should be considering.  See Trademark Power: Not All Trademarks Are Created Equal.  The Principle Register also will include marks that are considered “descriptive” provided they have secondary meaning.

During examination by the trademark attorney at the Trademark Office it is possible that it will be recommended that you give up seeking registration on the Principle Register and instead agree to registration on what is called the “Supplemental Register.”  This Supplemental Register is where trademarks that are descriptive and have no secondary meaning go.  The Supplemental Register exists in the United States largely due to legal obligations arising under International Law.  Nevertheless, registration on the Supplemental Register will give you the ability to still obtain a federal trademark and still use the familiar trademark symbol (i.e., ®).  The key difference between the two is that trademarks on the Principle Register are considered to be much stronger.  In the event that you plan on possibly suing others to prevent them from using a trademark you want the mark to be on the Principle Register.

It is simply not possible for some trademarks to make it there, at least not initially.  For many registration on the Supplemental Register is fine if registration cannot be had on the Principle Register, but this is another personal choice, and one that really is best made with private consultation with an experienced attorney if and when a decision needs to be made, which will not be for some time after you actually file an application.

Finally, it is exceptionally easy to make mistakes when completing the trademark application.  In fact, many non-attorney trademark services make critical errors when filing.  In most situations my firm sees, when a mistake is made in the application it is cheaper to just start over rather than work laboriously to save a defective application.  Of course, that means another filing fee and examination.  Just beware non-attorney trademark services.  We only charge $600 to file (plus the filing fee of either $275 or $325).  Having an attorney involved from the start will lead to a quicker granting and will quite likely save money in the long run.

3.         Prosecution with the trademark examining attorney

Once an application is filed it is assigned to a trademark examining attorney who reviews the application. The examining attorney pays particular interest to (1) the description of goods, (2) type of mark and whether the mark is “inherently distinctive”, “descriptive” and has acquired “secondary meaning” or “generic”, and (3) whether the mark is too similar to another mark and therefore likely to lead to a “likelihood of confusion” in the marketplace. Frequently the examiner will issue an “Office Action” that requires the trademark owner to provide additional information regarding the above-mentioned matters.  Such an Office Action is common and should not generally be a cause for alarm, provided of course that you promptly address the issues raised.

If the registration of a mark is rejected by the examining attorney, the trademark owner may appeal that decision to the Trademark Trial and Appeals Board and ultimately seek judicial review of the rejection.  Appealing a decision can be a costly matter though, so many will seek to amend the application so that it can be allowed without need to appeal.  If the rejection is because the mark is descriptive and without secondary meaning you may choose not to appeal and just simply elect to proceed onto the Supplemental Register.  Of course, it is your right to appeal, and appeals are not uncommon.  Again, whether to appeal is a decision made in part based on the law and in part based on business decisions, which means that deciding whether to amend or appeal is another decision best made with private consultation with an experienced attorney if and when a decision needs to be made, which will not be for some time after you actually file an application.

4.         Allowance and publication for opposition by the public at large

Once the examining attorney approves a trademark, the mark is published in a Patent & Trademark Office publication called the Official Gazette.

Upon publication, anyone believing they will be harmed by the issuance of the trademark has thirty days, which may be extended, to file what is called an “opposition.”  If an opposition occurs it is generally because the applicant’s use of the trademark is perceived to created what the law refers to as “a likelihood of customer confusion” with respect to one or more of the opposer’s trademarks for the same or related products/services.  An opposition can be filed if it is believed that registration of the trademark would suggest an association or affiliation with the opposer’s company when, in fact, no such association, or affiliation exists.

The likelihood of confusion criterion is most frequently based upon related products/services, or based upon the similarity of the parties’ trademarks, which may give rise to the belief that the products/services originate from the same source.  Only about three percent of trademark applications result in the filing of an opposition, so it is probably best characterized as rare, but certainly not unheard of.

If an opposition is filed a formal proceeding will be conducted by the Trademark Trial and Appeals Board. This procedure is primarily a “paper trial” where the parties file documents relating to their use of the trademark in dispute. At the conclusion of the opposition procedure a ruling is handed down that either permits or denies the registration of the trademark; this decision is appealable.  If an opposition is filed you should seek the assistance of an attorney or firm to assist you.

5.         Issuance of trademark registration certificate

If a trademark is not opposed during the thirty-day opposition period, or if the applicant prevails in any opposition proceeding, the Trademark Office will move forward with the registration. It usually takes two-to-three months from the end of the opposition period for registration to be finalized, whereupon the trademark owner receives a Certificate of Registration for the trademark and may begin using the trademark registration symbol, ® with their products/services.

It is not typically advisable to spend large sums of money on a trademark until the trademark application has successfully progressed past the opposition phase.  Because use of the trademark is required prior to filing there will need to be some expenditure of funds, but there are any number of items that you will want to display the new trademark and it can become quite expensive if you have to modify the trademark during the application process in order to obtain a federal registration.  This is true because if modification is required any funds spent on such things as business cards, letter head, signs, advertising, logo design, to name but a few, would need to be re-spent in the event the mark cannot be obtained or must be modified.

6.         Post-registration issues

For a trademark registration to remain valid, an Affidavit of Use (a so-called “Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.

It is absolutely essential that you keep these dates in mind.  If you do not file between the fifth and sixth year after registration your mark can never become “incontestable.”  An incontestable trademark is exceptionally strong because a defendant in a trademark action is left with extremely few ways to challenge the propriety of the trademark itself.  If you miss the ten-year filings the mark can and will go abandoned.  Therefore, these additional filings should be considered absolutely required to keep your mark in good standing.

The final concept that must be understood relates to what is called a “cancellation proceeding.”  At any time your mark could be subjected to cancellation if another party wants to file such a proceeding.  Such proceedings are more rare than oppositions, and are harder to win for the challenger, but do occur from time to time.  A cancellation proceeding is also virtually impossible to win after a Section 8 Affidavit has been filed between the fifth and sixth year, another reason to make sure you file the required documents at that time.  If you are facing a cancellation proceeding you would be best served to seek the assistance of an attorney or law firm that can assist you.

CONCLUSION

If you need assistance with a trademark matter please contact me.  Attorneys at Zies, Widerman & Malek are available to assist you wherever you are in the process.

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Posted in: Business, Gene Quinn, IP News, IPWatchdog.com Articles, Trademark, Trademark Basics

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

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  1. Thanks for the tips… You are seriously a guru, that gets a lot of us out of a ton of trouble before we find it.