Trademark Registration

The trademark registration process occurs before the United States Patent and Trademark Office (USPTO). It is an involved process governed by a number of statutes and federal regulations as well as hundreds of pages of the USPTO’s own procedural guidelines and legal interpretations. The USPTO careful reviews every application and rejects many. The Law Office of Anthony Elia, P.C., works to streamline the process and ensure success even for difficult applications. Below is a brief outline of the federal registration process.

Benefits of a Federal Trademark Registration

A federal trademark registration on the Principal Register provides a number of advantages, including:

• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• It’s easier to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®;
• Listing in the United States Patent and Trademark Office’s online databases which among other things reduces the chances that another will be able to obtain a federal registration for a mark that is confusingly similar to yours; and
• There may also be a benefit in the event of a dispute over a domain name wherein the owner of a registered trademark is much more likely to prevail in a domain name dispute.

The Trademark Process – Pre-Filing To Allowance

The application process starts with an interview. The details of your business and proposed mark will be analyzed and a preliminary search will be conducted. Your application is then prepared and filed. Approximately three months from the date your application is filed, the application is assigned to an examining attorney to determine whether federal law permits registration. The examining attorney will examine the written application, the drawing, and any specimen.

The examining attorney may issue a letter (Office action) explaining any reasons for refusing registration or other requirements. If you receive an Office action, you must submit a response within 6 months of the issue date of the Office action.

If the USPTO’s examining attorney finds that your mark may be registered under the relevant laws, regulations and rules, you will receive a Notice of Publication. The proposed mark will be published for comment and review by the public in the for publication in the Official Gazette (OG), a weekly online publication.

After publication in the OG, there is a 30-day period in which the public may object to the registration of the mark by filing an opposition. An opposition is similar to a court proceeding, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. A third party who is considering filing an opposition may first file a request for an extension of time to file the opposition, which could delay further action on your application.

If no opposition is filed or if you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a registration certificate about 12 weeks after publication, if the application is based upon the actual use of the mark in commerce (Section 1(a)) or on a foreign or international registration (Section 44(e) or Section 66(a)).

If no opposition is filed or you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a NOA about 8 weeks after publication.

A NOA indicates that your mark has been allowed, but does not mean that it has registered. As the next step to registration, within 6 months of the issue date of the NOA you must:

• Submit a “Statement of Use” if you filed based on intent to use (Section 1(b)) and are now using the mark in commerce;
• Begin using the mark in commerce and then submit a “Statement of Use;” or
• Submit a six-month “Request for an Extension of Time to File a Statement of Use” if you need additional time to begin using the mark in commerce.

Why Has Your Application Been Rejected?

Most Common Reasons

The most common reason for refusing registration by an examining attorney is a likelihood of confusion with the mark in a registration or prior application. The examining attorney will search the USPTO database to determine whether there are any marks that are likely to cause confusion with your mark. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

• The similarity of the marks; and
• The commercial relationship (e.g., channels of trade or class of purchasers) between the goods/services listed in the application and those listed in the registration or pending application.

To find a conflict, the marks do not have to be identical and the goods/services do not have to be the same. It may be enough that the marks are similar and the goods/services are related.

Some Other Reasons for Refusing Registration

Registration may also be refused if the mark is:

• Descriptive for the goods/services;
• A geographic term;
• A surname; or,
• Ornamental as applied to the goods.