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-US Acceptable Identification of Goods and Services Manual (over 1000 pages with notes). Another separate manual (1300 pages) covers the Trademark Trial and Appeal Board Manual of Procedure (TBMPURL: http://noticeofopposition.com/ttabmanualtbmp.html).



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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-infringing use. A federal, state and common law search plus conflict analysis step determines if a likelihood of confusion or of another conflict exists between the mark to be registered and marks already registered and pending with the USPTO plus state and common law marks. Lack of distinctiveness (a Right to Register issue) and likelihood of confusion (at the federal level) are two of most common reasons for USPTO trademark refusals.


→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:

  • Is used solely as a trade name or some other invalid use (see Valid Mark Use Chart and ‘Typical’ Brand Name Refusals);
  • Is functional;
  • Is a nondistinctive configuration of the goods or their packaging;
  • Is mere ornamentation;
  • Is the generic name for the goods or services; or
  • Is the title of a single creative work or the name of an author or performing artist.  

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:

  • Specimens that show potential brand names that are just trade names (trade names identify the business rather than the goods or services);
  • Show advertising of goods for trademarks registration (See Use in Commerce);
  • Ornamental use of the mark;
  • Specimens that are drawings of labels rather than actual labels in use, specimen cannot be of a temporary nature (See Specimen/Selection Review);
  • People’s surnames as marks; or
  • Other specimens that are not proper uses of a trademark or proper subject matter for trademarks.


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-TMEP 1402.01(a)

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:

  • Search.
  • Browse entire Manual.
  • ID Manual Notices The USPTO Acceptable Identification of Goods and Services Manual has been updated to reflect the implementation of the 9th edition of the Nice Agreement on January 1, 2007 .
  • Notes are available for some Identifications, if a Note is available, an underscored letter "Y" will display in the Note column of the search results page.


State Registration. State Registration is a great bargain (usually $50-$100 for 5 or 10 years) that is faster to achieve and generally easier to achieve than federal registration that puts others on notice of your use in commerce. Many states have enacted counterfeiting statutes to protect tourism or other local industry to increase the protection of trademark rights. State registrations are based on actual use in commerce. Several states follow the Model State Trademark Act and several base their registration on the federal Lanham Act.

Federal Registration. The federal trademark application form TEAS should be filled out with the USPTO taking into account the steps above.

  • You are encouraged to have all information required to complete the form available prior to starting your session, sessions are limited to 60 minutes but can be extended if the session is renewed at the correct point.
  • Image files for all TEAS forms must be in JPG format. To file an initial application for a stylized or design mark, you must be able to attach a black-and-white image file. Where a specimen of actual use in commerce is required, you must attach a scanned image or digital photograph, showing the mark "in use", not exceeding 2 megabytes per attachment.
  • The USPTO recommends that you first prepare complex entries, for example, goods/services recitations in a Word or Word Perfect document, which permits spell checking through that word processing tool, save it in text format and paste into the TEAS form.
  • Many categories, such as changes in ownership cannot be changed after filing, the registrant must start over (and pay again).
  • Registration Subject to Cancellation for Fraudulent Statements: You must ensure that all statements made in filings to the USPTO are accurate, as any inaccuracies may result in the cancellation of a trademark registration. For example, the lack of a bona fide intention to use the mark with all goods and/or services listed in an application or the lack of actual use on all goods and/or services for which you claimed use in an application or post-registration filing could jeopardize the validity of the registration, resulting in its cancellation. See TEAS important notices.



Office Action(s) from USPTO followed by Applicant’s Response to Office Action (ROA)

There are two basic possibilities: No Objections- the Trademark examiner allows the brand name (no Office Action) and it is Published for Opposition (see below); or Refusal-examiner refuses the brand name for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised.


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.


Publication for Opposition

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-to-Use, the applicant will receive a Notice of Allowance and has 6 months to file a Statement of Use (or Amendment) or an extension or the application will be declared abandoned. The USPTO does NOT currently require an issuance fee (like some other countries).


Trademark Marking

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.


Maintenance

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.


Recommended Steps

Enforcement

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-Counterfeit Enforcement for more information.


Domain Names-Remedies available to a trademark owner who has been infringed

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.


Record Brand Names or Trade Names (or trade style) with U.S. Customs and Border Protection (CBP)  

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)-are a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark;

Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-one which may so resemble a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name; and

Restricted Gray Mark Articles (19 CFR § 133.23)-are foreign-made articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the United States or a corporation or association created or organized with the U.S. and imported without authorization of the U.S. Owner.

Infringing copies or phonorecords (19 CFR § 133.42)-are “piratical” articles, i.e., copies of phonorecords which are unlawfully made (without the authorization of the copyright owner).




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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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