A trademark is any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods. A service mark is any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish his or her services from the services of others and to indicate the source of the services.
Rights in a trademark or service mark (“mark”) begin when the mark is used on or in connection with goods or services. Registration is not a requisite of mark ownership; however, registered marks enjoy certain substantive and procedural advantages. An unregistered mark can be used and infringements stopped; however, the rights in an unregistered mark are geographically limited to the territory in which the mark is actually used.
Before adopting and using a trademark or service mark, a search should be conducted to determine whether the proposed mark is available for use or whether it has been adopted and used by another in connection with related goods or services. Searching the availability of a mark before use can help to avoid significant complications and potentially costly problems in the future.
The test to determine the availability of a mark is whether use of the proposed mark is likely to cause confusion among consumers because it is similar to a mark previously adopted by another. If consumers are likely to mistakenly believe that there is some association or connection between two unrelated businesses using similar marks, then the first user has the right to prevent the late comers’ continued use of the confusingly similar mark. In conducting and reviewing searches, we look for similar marks used in connection with similar or related goods and services.
The recommended first step in the clearance process is to conduct a preliminary screening search. This search is conducted in our offices using a database containing information about all federal applications and registrations. This database is updated monthly and provides information that is nearly as current as the records of the U.S. Trademark Office. The preliminary screening search is for purposes of eliminating proposed marks that are obviously unavailable. We can generally provide you with the results of a preliminary screening search within twenty-four hours or less.
If a mark passes the preliminary screening search, a comprehensive search should be conducted. The comprehensive search is conducted by a company that specializes in trademark and service mark research. The comprehensive search includes information pertaining to relevant federal applications and registrations, state applications and registrations, “common law” trade names and trademarks (names and marks that are not registered, but that may impact your right to adopt or use your proposed mark), as well as domain name registrations. Sources of common law names and marks include publications, trade journals and other trade sources, major telephone directories and the Dun & Bradstreet database of over fourteen million company names.
Two copies of the comprehensive search report are provided to us by the research company. We review the search and comment upon the availability of the mark, pointing out the risks, if any, in adopting the proposed mark. The analysis letter and a copy of the search report are provided to you and should be retained in your files. With the information derived from the comprehensive search report and our analysis, you are able to make an informed business decision about how to proceed and you significantly reduce the risk of liability for trademark infringement.
If your goods are sold or your services are rendered in a single state, you may not qualify for federal registration of your mark and a state registration may be appropriate. However, if your goods are sold or your services are rendered in interstate commerce, your best choice to protect your mark is to apply for federal registration of the mark. The advantages of a federal registration on the principal register include:
Two types of applications for registration of a mark on the principal register are available. The first is an application based on use of the mark in interstate commerce prior to the filing of the federal application. This type of application is often referred to as an actual use or “1(a)” application; 1(a) being a reference to the section of the federal trademark law that provides for this type of application. The second type of application is what is commonly referred to as an intent-to-use or “1(b)” application. An intent-to-use application is based on the bona fide intent of the applicant to use the mark in interstate commerce in the future.
In addition to registration of a mark on the principal register, there is a second class of registrations available on what is known as the supplemental register. The supplemental register is for marks that are descriptive, but capable of distinguishing the applicant’s goods or services upon acquiring distinctiveness. A descriptive mark is one that immediately conveys information about the qualities, characteristics or features of the goods or services in connection with which the mark is used. If such a mark is capable of being transformed in the minds of consumers from a description of the goods or services to an identification of those goods or services as emanating from a single source (secondary meaning), then the mark may be entitled to registration on the supplemental register. Marks registered on the supplemental register are entitled to use the ® registration notice and have several of the other advantages of federal registration, however, they are not entitled to incontestable status. Further, in the event of an infringement action, the registrant must establish that consumers recognize the mark as a source identifier and not as a mere description of the goods or services.
The most important elements of a 1(a) actual use application are:
The most important elements of a 1(b) intent to use application are:
When an application is received by the Patent and Trademark Office, it is assigned an application filing date. This date is critical for an intent-to-use application because it is the date of the applicant’s constructive use of the mark. Contingent upon registration, the constructive use date confers on the applicant a nationwide right of priority in connection with the goods or services specified in the registration against all subsequent adopters of confusingly similar marks. The advantage of this is that it provides companies and individuals with an opportunity to protect their interest in a mark that they intend to use while they go about the business of developing product, gearing up their marketing and making actual use of the mark.
If all of the requisite elements of the application are present when the application is received by the Trademark Office, the application is assigned to a Trademark Office Examining Attorney. It is generally several months from the date of filing before an application is assigned to an Examining Attorney. If the requisite elements are not present in an application when filed, the application is rejected and returned and the filing date is canceled.
The Trademark Office Examining Attorney reviews the application. If everything is in order and the Examining Attorney has no questions or problems with the application, the application is approved and passed on to publication. If the Examining Attorney has questions about certain formalities relating to the contents of the application, or the specimen, typically he or she will call the attorney who filed the application and resolve the issues quickly by telephone.
If the Examining Attorney determines that there are grounds for rejecting the application, he or she will specify in a written document called an “office action” what the grounds are and the legal basis for rejecting the application. The most common bases for refusing registration and issuing an office action are the Examining Attorney’s conclusion that the applicant’s mark is confusingly similar with a mark that is registered or the subject of a previously filed application, the mark applied for is merely descriptive, or the specimen does not satisfactorily show use of the mark in connection with the claimed goods or services.
The Trademark Office provides a term of six months from the date of mailing the office action to prepare and file a Response to Office Action. Attorney time spent discussing the application with the Examining Attorney and preparing responses to office actions is commonly known as prosecution. Responding to an office action can be simple or it can involve significant time, legal research and the gathering of information from the client. Before responding to a difficult office action we confer with the client and discuss the options available, as well as the anticipated costs associated with those options.
If the response to office action is successful and the Examining Attorney’s refusal is overcome, the application proceeds to publication. If the Examining Attorney does not withdraw his or her refusal, he or she will issue a second and usually final office action. If the Examining Attorney’s final refusal cannot be overcome, the applicant must either abandon the application or file an ex parte appeal with the Trademark Trial and Appeal Board (“TTAB”) requesting that the Examining Attorney’s refusal be overturned. The TTAB is an administrative body charged with resolving disputes concerning federal applications and registrations.
In an ex parte appeal, the Examining Attorney and counsel for the applicant submit to the TTAB legal briefs in support of their respective positions. After oral argument before the TTAB, the TTAB renders a decision. If the TTAB affirms the decision of the Examining Attorney, the applicant must either abandon the application or appeal the decision to the U.S. Court of Appeals for the Federal Circuit. If the TTAB overturns the Examining Attorney’s refusal, the application proceeds on to publication.
It is important to remember throughout the application process that refusal or abandonment of the application does not mean that the mark cannot still be used, policed and protected. The application process only relates to federal registration of the mark and does not in any way impact an applicant’s right to use the mark in commerce.
If the refusal of the Examining Attorney was based on the descriptiveness of the mark, an applicant can amend the application to seek registration on the supplemental register rather than abandoning the application.
If the application was filed based on intended use and the mark is used in interstate commerce after the date of filing, but before the application is passed to publication, an Amendment to Allege Use can be filed. The Amendment to Allege Use effectively transforms the application from an intent-to-use application to a use-based application, resulting in the issuance of a Certificate of Registration after publication, rather than a Notice of Allowance. The important elements of an Amendment to Allege Use are the date of first use of the mark anywhere, the date of first use in interstate commerce, one specimen showing use of the mark, and payment of the prescribed government fee.
Once an application has passed the Examining Attorney, the mark is published for opposition in the Patent and Trademark Office’s Official Gazette. The mark is published in order to provide notice to others of those marks that have been approved for registration, and to provide them with an opportunity to challenge the application if they believe that they would be damaged by registration of the mark. The most common ground for opposition is a perceived likelihood of confusion between the published mark and a mark of the opposing party. A party with an objection has thirty days from the date of publication of the mark in the Official Gazette to file a Notice of Opposition or request an Extension of Time to File a Notice of Opposition.
If no Notice of Opposition is filed or Extension requested, the Certificate of Registration or Notice of Allowance will issue four to five months after publication. If a Notice of Opposition is filed, an opposition proceeding is initiated. An opposition proceeding is litigation involving discovery, the taking of testimony, preparation of briefs, and oral argument before the Trademark Trial and Appeal Board. Because an opposition proceeding is litigation, it can be expensive; although it is generally less expensive than an infringement action in federal district court. If the opposing party objects not only to registration of the mark, but also to its use, the opposition proceeding can be joined with a civil action for infringement and moved to a U.S. District Court.
If the opposition is successfully overcome, the application will proceed to registration or a Notice of Allowance will issue. If the opposing party is successful, the application will be abandoned or the applicant must appeal the TTAB’s decision to the U.S. Court of Appeals for the Federal Circuit or to a U.S. District Court.
Where the original application was based on use, or an Allegation of Use was filed and accepted prior to publication, a Certificate of Registration issues upon successful completion of the application process. When we receive the Certificate of Registration from the Patent and Trademark Office, we enter the pertinent information in our trademark maintenance database, calendar the critical maintenance dates and send you the original Certificate with a cover letter explaining the details of your registration.
If the original application was filed based on intended use, and an Allegation of Use was not filed or accepted, a Notice of Allowance will issue instead of a Certificate of Registration. An applicant has six months from the date of the Notice of Allowance to file an Allegation of Use or request an Extension of Time to File an Allegation of Use. The Allegation of Use provides the Trademark Office with the dates of first use and the specimen necessary to issue a Certificate of Registration. Upon acceptance of the Allegation of Use, a Certificate of Registration will issue.
An Allegation of Use can only be filed in relation to those goods or services identified in the application and on or in connection with which the mark is actually used. Therefore, if the initial application included a long list of goods, but use of the mark is only in connection with a few of those goods, the Allegation of Use must be limited to the goods with which the mark is actually used. In this situation, an applicant has three choices for proceeding:
If an applicant cannot or chooses not to file an Allegation of Use within six months of the issuance of the Notice of Allowance, an extension of the time to file the Allegation of Use must be requested. An extension request restates the applicant’s bona fide intent to use the mark in commerce. A government filing fee is charged for each extension. An extension extends the time for filing an Allegation of Use for an additional six months. If the extension request is defective, the application may be treated as abandoned, in which case the constructive use date will be lost and the application process will have to begin anew.
The first request for an extension of time to file an Allegation of Use is granted without a showing of good cause. Each extension request thereafter must include a statement of good cause stating the reason why the mark has not been used in interstate commerce. The same excuse cannot be used in successive extension requests. Up to a total of five extensions can be requested, extending the date for filing an Allegation of Use up to three years from the issuance of the Notice of Allowance.
Between the fifth and sixth year anniversary of the registration of the mark, a section 8 declaration must be filed in order to maintain the registration. The section 8 declaration states that the mark is still in use. A specimen showing current use of the mark must accompany the declaration when filed with the Trademark Office. If a section 8 declaration is not filed before the sixth anniversary of the registration date, (or within the six-month grace period (late fees apply)), the registration is canceled.
After the fifth year from registration of the mark, a registration can attain incontestable status with the filing of a section 15 declaration. To qualify for a section 15 declaration, the mark must have been in continuous use in commerce for five consecutive years from the date of registration, there must have been no decisions adverse to the registrant’s claim of ownership, and there must be no legal proceeding involving the mark presently pending. Most often, the section 8 and 15 declarations are combined in a single filing.
Within a one-year period prior to the tenth anniversary of the registration date, a renewal application must be filed with the Trademark Office in order to maintain the registration. The renewal application must include a declaration that the mark is still in use and a specimen showing current use of the mark. There is a six-month grace period after the tenth anniversary during which a renewal application will be accepted upon payment of an additional fee. Each renewal term is ten years. Failure to renew results in cancellation of the registration.
Because Owen, Wickersham & Erickson is a firm that specializes in this area of the law, as a matter of course we provide certain follow-up and monitoring benefits for our clients’ marks. As part of our service, we maintain a docket of all critical dates associated with the applications and registrations of our clients. We send reminder notices when the time comes for preparation and filing of section 8 and 15 declarations and renewals. In addition, we can review the Official Gazette and maintain a watch service to keep abreast of any applications or registrations that may conflict with our clients’ marks or that may otherwise be of interest to our clients.
We hope the foregoing information helps to clarify the federal application process. If you have any questions or wish to discuss in more detail the specifics of searching, the application process, maintenance, watching or policing of your valuable trademarks, please give us a call.