What is included in the application?
To obtain a U.S. trademark, a trademark application must be filed in the U.S. Patent and Trademark Office ("USPTO"). The application which preferably is filed on line (its cheaper) contains a description of the goods or services (if a service mark), a drawing, and a specimen if the Mark has already been used. The Application must contain the date the applicant first used the mark anywhere in the world and the date the applicant first used in the mark in interstate commerce in the United States for a "USE" based application. The application does not require this if it is an "INTENT TO USE" based application. The application also includes the name of the applicant, the name and address to correspond, the identity of the goods or services which is the subject of the Mark, the filing fee, and a basis for the application (either USE based or INTENT TO USE based).
The Trademark Prosecution Process in the United States Patent and Trademark Office
The first step in the process is a trademark clearance search by the Trademark Examiner. However, before submitting the trademark application a Trademark Clearance Search and Opinion should be performed outside of the USPTO to determine whether any conflict with an existing Mark exists and which the Examiner will raise an objection, and whether an outside party may object in an Opposition proceeding, or in litigation. The Trademark Clearance Search and Opinion provides this determination. If a conflict does not exist, and your mark is not determined to be generic, descriptive, geographically descriptive, a surname, ornamental, or geographically miss descriptive (each of these terms has is a legal determination resulting in reasons not to file an application) then application for federal registration is appropriate for filing to have the Mark registered federally. The filing fee is $275.00 for a single class of goods or services if the application is filed electronically.
Once the trademark application is filed with the U.S. Patent and Trademark Office, as noted, the Trademark Examiner will search the U.S. Patent and Trademark Office records to determine if there is a conflict. The Examiner reviews the records of the USPTO to determine if there is a conflict between your Mark and another mark that is registered or is currently pending as an application in the U.S. Patent and Trademark Office. The Trademark Examiner looks at several factors such as similarity of the marks, the commercial impression between the goods or services listed in your application, and the existing mark or other third party pending application. The marks do not have to be identical and the goods or services do not have to be exactly the same for a conflict. It may be enough the marks are similar and the goods or services are related for the Trademark Examiner finds a conflict and denies the registration of the application. If the Trademark Examiner finds a conflict exists, the Trademark Examiner will refuse to register the marks on the grounds of likelihood of confusion. This is a major reason or factor why one should have an initial Trademark Clearance Search and Opinion performed before filing your trademark application. The Trademark Examiner may refuse registration on other grounds. The advantage of doing a Trademark Clearance Search is so money is not wasted and a potential conflict with a third party is avoided. The Trademark Examiner determines the mark in the application is descriptive of the goods or services, or geographically descriptive of the goods or services. The Trademark Examiner will refuse registration.
One of the primary considerations for your potential mark should be how distinctive is you mark. Trademarks are classified into four (4) categories, they are: (1) arbitrary and fanciful, (2) suggestive; (3) descriptive (the mark will not be registered unless the source of the goods or services has been commercially established); and (4) generic (a generic mark is never entitled to be registered - consider it to be a definition).
An arbitrary or fanciful mark has no relation to the associated goods or services, therefore is distinctive. Examples of these types of marks are Clorox, Kinko's, and Kodak. These marks only mean their respective products or services. A suggestive mark is distinctive as well, inherently distinctive, and distinguishes one merchant's goods or services from those of another. An example would be United Parcel Service, it suggests, it does not state what it is. Coined words are what usually make up a fanciful mark. Arbitrary marks such as Clorox do not have a relationship to the associated goods or services. A suggestive mark signals some association with the goods or services, a step in the imagination is necessary to determine the nature of the goods or services. Descriptive marks are marks that identify a characteristic, function, quality, or purpose of the product or service. A descriptive mark is therefore not distinctive.
Office Actions and Beyond
Once you are either to overcome an Examiner's Office Actions, such as the Mark is descriptive, of if the Trademark Examining Attorney does not raise an objection to registration, the Trademark Examining Attorney approves the mark for publication. The Mark is published in the Official Gazette, a weekly publication of the USPTO. The USPTO sends a Notice of Publication to you, the applicant, stating the date the Mark will be published. Any third party who believes they may be damaged by the registration of your Mark, has thirty (30) days from the date of publication to either file for an extension for time to oppose your application, or an opposition to your application. An opposition is held under the jurisdiction of the Trademark Trial and Appeal Board (TTAB), a USPTO administrative tribunal. If no opposition if filed, or if you are able to overcome the opposition if one is filed, the next stage of the registration process and you will receive one of two types of notices depending on the basis of your application. For a use based application a Certificate of Registration will issue. For an Intent to Use based application a Notice of Allowance will issue and you will have up to thirty (36) months to use your Mark to receive the Certificate of Registration.
Benefits of Federal Trademark Registration
- Registrants ownership of the Mark;
- Evidence of Validity of the Mark;
- Exclusive right to use the Mark in connection with the specific goods or services associated with the Mark;
- Prima facie evidence of continued use of the Mark since its filing date
- After five (5) years of continuous use of the Mark and the filing of Affidavits, the Mark can be deemed to have incontestable status; and
- The right to bring suit in federal court.