What’s the trademark examination process like?

A trademark application based on use (a 1(a) application) generally takes about one year to register. Approximately 3 – 4 months after the trademark application is filed, an examiner will be assigned to the trademark application. The examiner will search the existing trademark database to see if there are any registered or pending marks which are confusingly similar to your mark. If the examiner finds such a mark, the examiner will issue an “Office Action,” which explains that the examiner is refusing to register your mark for likelihood of confusion. At this time, the examiner may also issue an Office Action refusing to register your trademark on any of the other grounds stated the Lanham Act (the federal law governing trademarks), such as the mark is merely descriptive, the mark is merely a surname, or the mark is generic. Sometimes, the Examiner issues an Office Action for a procedural issue, such as the goods or services listed in the application require further clarification. If you have received an Office Action, don’t worry. We help you respond to Office Actions, and if necessary, appeal them to the Trademark Trial & Appeal Board.

If there is no Office Action or the issues raised in the Office Action resolved, the mark is approved by the examiner and published in the official gazette for 30 days. This allows a period of time for other trademark owners to file a notice of opposition if they feel their mark would be harmed by your registration.

If no one files an opposition to your trademark, then your trademark proceeds to registration. The registration certificate issues a few months after the opposition period ends. If someone has filed an opposition to your trademark, give us a call and we can help you through the process.

If you filed your trademark application based on an intent-to-use basis (a 1(b) application), the process is fairly similar to the 1(a) application process. The difference is that you must file a statement of use after the examiner approves your trademark and issues a “Notice of Allowance.” If you are not using the mark after the Notice of Allowance is issued, then you can file up to five 6 month extensions of time. After that, you must state use.

Please do not hesitate to call us with any questions – we have filed and prosecuted hundreds of trademarks.  Take advantage of working with a registered patent and trademark attorney today!

Do I need a federally registered trademark?

It is not necessary to register a trademark in order for it to be protected under trademark law. In the United States trademarks rights are based on use, not registration. However, a federal registration provides significant benefits to the owner of the mark, including:

  • A legal presumption of the exclusive right to use the trademark on the registered goods or services nationwide;
  • A legal presumption that the trademark is valid and owned by the registrant;
  • The right to use the ® symbol along with the trademark;
  • Registration serves as notice to others that the owner is claiming the trademark;
  • Registration will block confusingly similar marks from being registered;
  • Registered marks can gain incontestability after five years (eliminating some challenges to validity of the trademark, i.e. challenges based on descriptiveness);
  • Registration establishes a presumption of priority over other marks;
  • Registration can serve as a basis to register the trademark in other countries;
  • Registration can serve as evidence of ownership, validity, and constructive notice in trial; and
  • Registration can provide the trademark owner with greater remedies in the case of infringement.

Do I need to ‘renew’ my trademark?

Yes. You must file a declaration of use (also referred to as a Section 8) between the 5th and 6th year that your trademark is registered. You need to file a declaration of use and a renewal (also referred to as a Section 9) every 10 years. So, if your trademark was registered on January 1, 2010, you would need to file a Section 8 by January 1, 2016, and a Section 8/9 by January 1, 2020, January 1, 2030, January 1, 2040, and so on.

Do I need to file a declaration of incontestability (also known as a Section 15)?

No, but it’s a good idea. Filing a declaration of incontestability provides a number of benefits to the registrant, including:

  • An incontestable mark can be the basis for enjoining infringing use of the mark;
  • An incontestable mark is conclusively considered valid; and
  • Incontestability shields the mark from challenges on the grounds that the mark is descriptive, primarily merely a surname; or geographically descriptive.

If I have a logo and a name that I would like to register as a trademark, can I combine the logo and name together and have the combined design protect against an infringer who only copies the logo, and not the name? What about against an infringer who infringes only on the name, and not the logo?

This question can be slightly complicated. If a logo incorporates wording into a mark then the words would have trademark protection to the extent that they are used within the logo. That being said, both the words in the logo and the logo itself could protect against infringement, depending on how similar the infringing use is to the registered mark.

In order to determine whether a mark infringes another mark the courts look to see if there is a likelihood of confusion. That is, the court must determine whether a consumer would likely be confused as to who produces the goods or could mistakenly attribute the goods associated with one mark to another mark. In order to make this determination the courts look at a number of factors. For example, in the Ninth Circuit the courts look at the Sleekcraft factors which are:

  1. Strength of the mark (the allegedly infringed mark);
  2. Proximity of the goods;
  3. Similarity of the marks;
  4. Evidence of actual confusion;
  5. Marketing channels used;
  6. Types of goods and the degree of care likely to be exercised by the purchaser;
  7. Defendant’s intent in selecting the mark; and
  8. Likelihood of expansion of the product lines.

In short, a trademark that incorporates a logo and a name would protect against infringers that use a logo or a name that are so similar to the registered mark that a consumer might attribute the infringing good or service to the owner of the registered mark.

What’s the difference between TM and ®?

The different between TM and ® is that the ® symbol can only be applied to registered trademarks. If someone uses TM next to their trademark, it indicates that they are claiming that it is their trademark but does not necessarily mean that it is registered or that they have even applied for a trademark. ®, on the other hand, indicates that the trademark has been registered with the USPTO. If someone uses the ® without a valid trademark registration, this constitutes fraud upon the USPTO.