STACY J GROSSMAN

Trademark Prosecution 101


by Stacy J Grossman,

 

Owning a United States trademark registration for a brand confers a number of benefits.  This article will help you understand what to consider and what to expect as you select, adopt and apply to register a new trademark.

Clearance 

Trademark clearance involves searching (either through an in-house search or a comprehensive search performed by a vendor) and analysis.  The purpose of trademark clearance is to determine if there are any potential problems that might make a mark difficult or impossible to register, or that might subject a client to a claim for infringement.  The results of a search also inform how best to craft the description of goods and services included in a trademark application, and will indicate how strong a client’s trademark rights are likely to be in the brand being considered.

Issues that attorneys discuss with their clients during the clearance process include:

- Is the proposed trademark registerable?  In the United States, marks cannot be registered if, among other things, they are: generic; confusingly similar with another trademark already registered or used in the United States; immoral, deceptive or scandalous; or the name of a living individual without that person’s written consent.  In addition, certain descriptive marks are only capable of being registered if the trademark applicant can prove that they have acquired distinctiveness.

- Are any third parties using the same or similar marks for the same or similar goods or services?  On the one hand, if there is just one other person using the identical or nearly identical trademark for similar goods or services, it might be impossible to register the proposed trademark.  On the other hand, if there are many people using similar trademarks for similar services, then perhaps the proposed trademark can co-exist with the earlier registrations.

- How to craft the description of goods and/or services covered by the trademark, to increase the likelihood of smooth prosecution, and to decrease the likelihood that a third party will object to the registration and use of the mark. 

- Who are the owners of arguably similar trademarks, and are those individuals or entities likely to object to the client’s registration and use of the proposed trademark?

- Have there been any litigations or administrative proceedings involving the proposed trademark or confusingly similar marks?

Preparation of an Application 

Once the proposed trademark is cleared for registration and use, the client might decide to file an application to register it with the United States Patent and Trademark Office.  It is critical that a trademark application be drafted carefully and accurately, to avoid defects that might affect the validity and enforceability of the trademark registration.  The information included in a trademark application is a public record that is searchable in the USPTO’s online database.

Information required on the trademark application includes:

- The trademark owner’s name and address (individual, corporation)

- The trademark (word mark, design mark, other type of mark)

- The filing basis (use, intent-to-use, foreign registration, or other)

- The classes in which the mark is or will be used

- For each class, a description of the goods or services with which the trademark is or will be used

- For a use-based application, the date of first use anywhere, and the date of first use in commerce for each class of goods or services

- For a use-based application, a specimen for each class of goods or services showing the mark as it is used in United States commerce

Prosecution of An Application/Timing Considerations

In the United States, once a trademark application is filed in the United States Patent and Trademark Office, it takes approximately three months for it to be assigned to an Examining Attorney. 

Once assigned to an Examining Attorney, he or she reviews the application for defects, and also looks to see whether the applied for mark is confusingly similar to any existing registrations or pending applications.  If there are no technical or third party issues, the Examining Attorney will approve the mark for publication.  When the mark is published, any party with standing has 30 days to oppose the registration of the proposed trademark, or to file a request for an extension of time to oppose the application.  If an opposition or extension of time to oppose is not filed during this time, then the mark will proceed to registration.

In the best-case scenario, it takes approximately nine months from the date an application is filed until the date that a registration certificate is issued.

If the Examining Attorney finds a defect with the trademark application, or believes that the proposed trademark is confusingly similar to one or more existing registrations or pending applications, then he or she will issue an Office Action.  An Office Action is a formal notice, and requires a response no later than six months after the Office Action is mailed.  Depending on the nature of the issue raised in the Office Action, a response can be simple and brief, or it can require a sophisticated legal argument.  Upon reviewing the Office Action response, the Examining Attorney may approve the mark for publication, or may maintain his or her refusal to register the mark, in which case further prosecution is required.

If a third party files an opposition to the proposed trademark, the trademark applicant and the opposer will be involved in an adversarial proceeding before the Trademark Trial and Appeal Board.  This is akin to a litigation, and the trademark applicant will have to decide whether to defend its application or abandon it, or perhaps negotiate a resolution.

Both Office Actions and opposition proceedings delay the issuance of a trademark registration, sometimes for months and sometimes much longer.  

If a trademark applicant filed an intent-to-use application, then instead of a receiving a certificate of registration after the prosecution process, he or she will receive a notice of allowance.  The applicant has three years from the date of the issuance of the notice of allowance to begin to use the applied-for-trademark in commerce.  Once use has commenced, the applicant must file a declaration of use, at which point the pending application will mature to a registration.

Post Registration Matters 

Once an application is filed and a registration issues, a trademark owner must monitor and enforce his or her trademark, to ensure that third parties don’t adopt and use similar or identical marks for similar or identical goods and services.  This can be achieved by manual searching, or by subscribing the trademark to a watch service.

Between the fifth and sixth year following registration, and then in the year preceding the tenth anniversary of the registration and every ten years thereafter, a declaration must be filed showing that the mark is still in use in U.S. commerce.

In order to maintain trademark rights, a trademark owner must use the mark shown in the registration in connection with the goods and services covered by the registration.  If the trademark owner materially changes the trademark or uses the trademark in connection with different goods and services, then a new application might be required.

Official Fees 

The schedule of USPTO filing fees is here.

The information contained in this article is a high-level summary.  Additional information about the trademark application and registration process can be found on the website of the United States Patent and Trademark Office.