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1. Official Filing Receipt:
The official filing Receipt is a document which acknowledges that the United States Patent and Trademark Office (USPTO) did receive your application. When we file the application electronically, the Receipt is sent to our e-mail address listed in the online application. When we file the application via mail, the Receipt is sent to us approximately 4 weeks later. In both situations, when the Receipt arrives, it needs to be examined closely for errors made by the USPTO or by us. The Receipt includes the application’s serial number, the date of filing, the applicant’s name and address, the mark, the type of application, and other information. If there is a mistake, we must notify the USPTO immediately. Generally we can correct anything in the application except the mark and the nature of the application.
2. Office Actions:
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the Trademark Rules of Practice, 37 C.F.R. Part 2.
A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.
If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.
After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. 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 between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line at http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk, or by visiting the USPTO Public Search Facility – Madison East, 1st Floor, 600 Dulany Street, Alexandria, Virginia. The library is open between 8:00 a.m. – 5:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Facility are free.
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html. Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.
You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199, to request a status check.
In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:
- primarily merely descriptive or deceptively misdescriptive of the goods/services;
- primarily geographically descriptive or primarily geographically deceptively;
- misdescriptive of the goods/services;
- primarily merely a surname; or
- ornamental.
This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://www.uspto.gov/web/offices/tac/tmep/, for a complete discussion of the grounds for refusal of registration of a mark.
3. Notice of Publication:
If we have not received an Office Action, we should receive a Notice of Publication from the USPTO 6 to 9 months after filing. The Notice of Publication is a document which indicates that your mark has been approved by an Examiner and will be published in the Official Gazette on the publication date listed on the notice. Once published, any third party who believes it will be damaged by registration of the mark has the opportunity to file an opposition. The third party has 1 month to file the Opposition but may request a 1 month Extension if needed.
4. Notice of Allowance:
If no Opposition is filed against your proposed registration during the publication period, we should receive Notice of Allowance from the Trademark Office 2 to 3 months after the publication date.
5. Registration and Issuance of Certification of Trademark:
If an ‘Actual Use’ trademark application has been filed, registration may occur shortly after the end of the publication period as stated above. If an ‘Intent to Use’ trademark application has been filed, then registration will not occur until either an Amendment to Allege Use or a Statement of Use has been filed. If one of these documents have been filed, then registration will occur shortly therewith. Shortly after registration, a Certificate of Registration is sent to us which is then forwarded to you. This is the original document and can not be duplicated. Therefore, it should be kept in a secure location.
6. Amendment to Allege Use, Statement of Use and Petition for Extension of Time to file a Statement of Use:
If we filed an Intent to Use trademark application, we must file either an Amendment to Allege Use or a Statement of Use to convert the Intent to Use application into an Actual Use trademark application. There are two time periods when conversion may occur. Either before Notice of Allowance or after Notice of Allowance. We file an Amendment of Allege Use to convert the application before Notice of Allowance and we file a Statement of Use after the Notice of Allowance. The Statement of Use must be filed before 6 months of the Notice of Allowance mailing date or if you are not able to do so, you must file a Petition for Extension of Time to file a Statement of Use. You are allowed up to 5 Extensions before you must file a Statement of Use.
7. Notice of Acceptance of Statement of Use or Notice of Acceptance of Extension of Time:
After you file a Statement of Use or a Petition for Extension of Time to file a Statement of Use, you should receive a communication from the Trademark Office in the form of a Notice of Acceptance of Statement of Use or a Notice of Acceptance of Petition for Extension of Time to file a Statement of Use, respectively. These documents are important because they inform us that your application is still ‘active.’ If the Statement of Use or Petition for Extension of Time to file a Statement of Use was not accepted or lost, then your application will become administratively abandoned. If we submit a Statement of Use and a Notice of Acceptance of Statement of Use is sent to us, we should receive your Certificate of Registration within several weeks.
8. Use of TM and SM vs. ® Symbols
The trademark (TM) and service mark (SM) symbols are used to claim ownership of trademarks and service marks that are either not officially registered on the Supplemental or Principal Register with the USPTO or are only registered in a state. Using these symbols lets potential infringers know that the owner claims trademark rights in the name, logo, or phrase they use to market their product or service. Although, displaying these symbols does not guarantee statutory legal benefits to the owner, it may bring about the possibility of collecting damages in an infringement matter because it makes it nearly impossible for an infringer to prove that they didn’t know you had rights to the trademark.
If the mark is already federally registered, or registered on the Supplemental or Principal Register with the USPTO, then you have the right to display the ® symbol with your mark and should begin doing so right away. If you had been using the (TM) or (SM) symbols before your trademark became registered you can simply switch to the ® symbol. By placing the ® symbol to the right of the mark, you are more likely to receive compensation in the event of an infringement case. Compensation can include damages, the defendant’s profits, and attorney’s fees. You may also make a statement that [your mark] is a registered trademark of [your name]. This is just as effective as the ® symbol but takes up more room.
9. Section 8 Affidavit, Combined Section 8 & 15 Declaration of Use & Incontestability, and Combined Section 8 & 9 Declaration of Use & Application for Renewal of Registration:
After receiving the Certificate of Registration, you must proof to the USPTO that you are still using the mark at two time intervals after the registration date. The documents are called Section 8 Affidavits or Declarations and must be filed between the 5th and 6th year anniversary date and between the 9th and 10 year anniversary date. The first Section 8 Affidavit or Declaration is combined with another document called a Section 15 Affidavit that includes a statement by the owner of the mark that the mark as been used continuously and that no pending litigation or opposition exists against the mark. The second Section 8 Affidavit is filed with an Application for Renewal of Registration, called a Section 9 Renewal Application.
10. Notice of Acceptance of Section 8 Affidavit, Notice of Acceptance of Combined Section 8 & 15 Declaration of Use & Incontestability, and Notice of Acceptance of Combined Section 8 & 9 Declaration of Use & Application for Renewal of Registration:
Once we receive a Notice of Acceptance of Section 8 Affidavit, a Notice of Acceptance of Combined Section 8 & 15 Declaration of Use & Incontestability, or a Notice of Acceptance of Combined Section 8 & 9 Declaration of Use & Application for Renewal of Registration you can feel assured that your filings made it to the appropriate offices, your mark is still protected, and you can continue to use it in the marketplace.
11. Monitoring Service
The primary function of a trademark is to identify a particular product or service in the marketplace. The owner of a trademark must not allow others to use the mark without restriction because it will no longer serve as an indicator of a particular product’s or service’s origin. You MUST take action against infringers.
The USPTO does not notify trademark owners of registered trademarks of pending marks. Therefore, companies have the burden of monitoring the application filing records of the USPTO. If a mark is found that is considered to be too close to an existing registered trademark, then a Petition for Opposition must be filed. If the mark is registered, then a Petition for Cancellation must be filed.
12. Use the Mark Properly
Do not let the trademark become the generic or household name for the product. Always accompany the mark with its generic product name or service name, always capitalize the mark, never use the mark as a verb or as a general noun, use reminders to inform the public that “” is a trademark of ABC company.
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