Knowing the Trademark Registration Process
An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney.
The best source of detailed information (about 1500 pages) on obtaining a trademark with the USPTO is the USPTO Trademark Manual of Examination ProcedureURL: http://tess2.uspto.gov/tmdb/tmep/ (TMEP). A separate manual covers the Identification of Goods and Services-
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Steps in the Brand Name/Trademark Process
Short Summary of Steps Leading up to Filing for Registration & Steps After Filing for Registration
Before Filing for Registration After Filing for Registration
→A Right to Use Analysis should be done to ‘clear’ the brand name for non-
→A Right to Register Analysis with distinctiveness analysis step should be done to determine if your potential brand name is registrable.
Some reasons why it may not be registrable are if the brand name does not function as a trademark because it:
Or if the mark is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or if it falls into one of about a dozen other reasons why the mark does not qualify for statutory reasons or common law use reasons to be registered. (See Grounds For Refusal and Function As A Mark.)
Note: The filing fee with the USPTO is a processing fee for the application. This fee is not returned even if ultimately the USPTO does not issue a registration. You should take all necessary steps to ensure the mark is registrable before filing the application. See TEAS important notices.
→A Specimen Review step should looks at potential specimens to find those that are a good representation of how the brand name is being used AND a good representation of how a federally registerable trademark SHOULD be used. (Not necessarily the same thing.)
Common incorrect specimens (that may lead to refusals) are:
→A Goods and Services Identification Review step is choosing the ID that best describes what goods and services are being claimed and in use in commerce and prepares the listing and identification of goods and/or services to meet the standards of the USPTO Manual of Acceptable Identifications of Goods and Services. The accuracy of identification language in the original application is important because the identification cannot later be expanded.
USPTO General Guidelines for Acceptable Identifications of Goods and Services-
With few exceptions, an identification of goods and services will be considered acceptable if it is:
* Written in English
* Describes the goods and/or services so that an English speaker could understand what the goods and/or services are even if the grammar or phrasing isn't optimal
* Meets the standards (not necessarily the language) set forth in the US ID Manual
* Not a class heading
* In the correct class
USPTO ID Manual sites:
→State Registration. State Registration is a great bargain (usually $50-
→Federal Registration. The federal trademark application form TEAS should be filled out with the USPTO taking into account the steps above.
There are two basic possibilities: No Objections-
If an Office Action is made by the USPTO, Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. No response is the leading cause of abandoned applications.
Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. Any party that feels that it may be damaged by the issuance of the trademark has a right to file an opposition within 30 days of the publication of the trademark. See also Published for Opposition and Opposition Steps/Cancellation Steps
→ Certificate of Registration (for actual use) or Notice of Allowance (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-
The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered.
A brand name owner must maintain the brand name by continuing to use the brand name in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times. Two years of nonuse may be evidence of abandonment.
The USPTO does not enforce rights to a trademark, trade name, corporate name or any other rights. It is up to the owner to monitor and protect their own rights through civil or criminal means. A trademark owner may seek remedies against infringers in U.S. District Court (registered trademarks) or in state courts (for registered or unregistered trademarks for state or common law infringement or unfair competition). Oppositions and Cancellations can be pursued through the USPTO to enforce marks by prior users and others. See Grounds for Opposition and Published for Opposition see also Opposition Steps/Cancellation Steps
Trademarks may be protected from imported counterfeits by recordation with the U.S. Customs and Border Protection (CBP), through working with the FBI and reporting counterfeiting, and by seeking enforcement through the International Trade Commission (ITC). See Anti-
Domain name registrants and brand name owners that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.
Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.
Violation of the Anticybersquatting Consumer Protection Act (domain names) may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
Remedies for trademark owners who have been infringed through domain name registrations and use are also available through Domain Name Dispute Resolution at the World Intellectual Property Organization and other organizations. See http://wipo.int/amc/en/domains/ for more information.
Only trademarks that have been registered on the USPTO Trademark Principal Register or copyrights registered through the Library of Congress can be recorded and protected through U.S. Customs and Border Protection and through the International Trade Commission.
Different CBP rules apply for different types of importations with protection available for:
Counterfeit Trademarks (19 CFR § 133.21)-
Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-
Restricted Gray Mark Articles (19 CFR § 133.23)-
Infringing copies or phonorecords (19 CFR § 133.42)-
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