Business Succession

Trademarks: The Filing Process

What Are Trademarks

A trademark is any word, name, symbol or device, or any combination thereof, used, or intended to be used, in commerce to identify and distinguish goods of one manufacturer or seller from others, and to indicate the source of goods or identify products or services to consumers. In other words, a method for protecting your brand by distinguishing themselves or their products from other businesses or their products.

Practically speaking, your trademark should be an adjective, not a noun.  If your mark is used as a noun rather than an adjective, it can actually lose its status as a trademark. Case in point: did you know that the words “escalator”, “cellophane”, “aspirin”, and “kleenex” were once trademarked names? The use of the word became so common that they became nouns in society. Once a product loses its uniqueness and is used as a noun, the mark is no longer protectable, simply because they become generic. So, when determining whether or not a trademark is appropriate for your business, you must first determine whether or not the name itself is appropriate for registration.

What can be trademarked: the “likelihood of confusion” test

You don’t have to choose a name that is exactly the same as another business’ to be a trademark violation. Instead, the standard is “confusingly similar”- anything that could cause confusion to the consumer, thereby harming the “commercial reputation” of the business.

What are some examples of “confusingly similar”?

BLOCKBUSTER VIDEO AND VIDEO BUSTER
COCA-COLA and CLEO COLA
CHAT NOIR and BLACK CAT
Do you see the potential for confusion? It can arise from phonetically similar names, translations, or similar words.

THEREFORE, BEFORE YOU EVEN CONSIDER A TRADEMARK, YOU MUST RUN A DUE DILIGENCE SEARCH

All too often, I see business run into trouble by choosing a brand name, maybe investing in branding and a website…only to receive a cease and desist letter from another company because their name is too similar to another company’s. Whether or not you think you want a trademark, before you start using a business name, your name must be able to clear a due diligence search. This is something I recommend to each of my clients, and is a stand-alone service I offer here.

 

When Do I Need A Trademark?


1. When you are able to define your “Classes” of registration

2. When you are able to produce a “specimen

3. When you are able to afford the time and expense of the registration process

4. When you’ve passed the due diligence test.

The answer may surprise you, but probably not as early as you think. Applying for, maintaining, and protecting your mark is expensive and very time consuming, and extremely difficult without an attorney- your chances of a successful registration rise exponentially when using a lawyer.  Even if you get your trademark, only a court can actually stop another person from infringing on your work, and nothing in court is ever cheap. Trademarks are an expensive investment.

If your business is just starting, you probably aren’t ready for a trademark, for multiple reasons. The biggest issue I see arise with potential clients who want a trademark too early in the process is their inability to provide what’s called a “specimen”. A “specimen” is the proof you must show on your registration that your “mark” is being used in commerce. For example, let’s say I am registering a trademark for a client’s business name. Let’s also say this client is selling products online. In order to successfully register, the client’s business will have to be well-defined enough to ascertain what class is appropriate- it will also be required to prove that it is using that “class” in commerce. In other words, that client will have to prove that a customer would be able to purchase that product on the date of registration- which means that I am actually required to provide screenshots or other proof of “use in commerce” when I file.

There are two types of registrations: 1A and 1B registrations

 

Filing a 1A application

All of this information comes directly from the USPTO website, which can be found here.

Step 1. Application filed. You file an application based on use of your trademark in commerce. Your application is given a USPTO serial number. You can check the status of your application by entering the serial number in the TSDR database or calling the trademark status line at 571-272-5400, or toll-free at 1-800-786-9199 (select option 1, then option 2). In about three months go to step 2.

Step 2. USPTO reviews application. If your application meets the filing requirements, it’s assigned to an examining attorney, who reviews it to determine whether federal law permits registration of your trademark. Filing fees are generally not refunded, even if your application is later refused registration. In about one month go to step 3a or step 3b.

Step 3a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 3b. USPTO issues letter (office action). If the examining attorney finds grounds for refusing to register your trademark, or if your application does not satisfy all legal requirements, the examining attorney issues a letter (office action) explaining those refusals and/or requirements. You must respond to the office action within six months of the date it was issued. Within six months go to step 4a or step 4b.

Step 4a. You submit a timely and complete response to the office action. To avoid abandonment of your application, you must timely submit a response that overcomes each refusal and/or satisfies each requirement in the office action. The examining attorney will review your response. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go to step 5a or step 5b.

Step 4b. You do not respond and your application abandons. If you don’t respond within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 5a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application meets all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that we will be registering your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 5b. USPTO issues final letter (office action). If your response does not overcome all refusals and/or satisfy all requirements, the examining attorney will issue a “final” refusal letter (final office action) that makes final any remaining refusals and/or requirements. You may appeal the examining attorney’s decision by filing an appeal with the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter that overcomes the remaining refusals and satisfies the remaining requirements. And in limited circumstances you may file a petition to the Director. For more information on appeals, visit the TTAB webpageand see our video, “TTAB.” Within six months go to step 6a or step 6b.

Step 6a. You file an appeal and/or submit a timely and complete response to final letter. To avoid abandoning your application, you must timely file a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter (office action) to the examining attorney, who will review it to see if it overcomes all final refusals and/or satisfies all final requirements. If not, and you did not file a Notice of Appeal, your application will be abandoned and your trademark will not register. In this situation, filing fees are not refunded. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go tostep 7a or step 7b.

Step 6b. You do not file an appeal or fix remaining issues and your application abandons. If you don’t file an appeal or otherwise fix all the remaining issues within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 7a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition ”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 7b. TTAB processes your appeal. If your response does not overcome all final refusals and/or satisfy all final requirements and you filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be processed and instituted by the TTAB. For more information on appeals, visit the TTAB webpage and see our video “TTAB.”

Step 8. USPTO registers your trademark. Within about three months after your trademark publishes in the Trademark Official Gazette, if no opposition was filed, we register your trademark. If an opposition was filed but was unsuccessful, we will register your trademark after the Trademark Trial and Appeal Board dismisses the opposition. After your trademark registers, you must periodically file maintenance documents and fees within specific time frames to keep the registration active. For information on keeping your registration active, as well as the optional Section 15 filing to enhance the legal strength of your registration, see our video, “Post-Registration Issues.” Between five to six years go to step 9 and every 10 years go to step 10.

Step 9. You file a Section 8 declaration. Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, you must file a Declaration of Useor Excusable Nonuse under Section 8 and pay applicable fees. This declaration must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled.

Step 10. You file a Section 8 declaration and Section 9 renewal. Within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, you must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9 and pay applicable fees. This declaration generally must include a verified statement that your trademark is in use in commerce, along with evidence showing that use, and the renewal is a statement requesting that the USPTO renew your registration. If you don’t file this combined declaration, your registration will be canceled and expire.

 

If you still want to register your trademark, but aren’t able to provide a “specimen”, there is an alternate option- filing a 1B application.

A 1B application follows all of the same steps as a 1A application, with one distinction- you do not have to file a specimen. In other words, a 1B application is an application stating that you have a “bona fide” intent to use the mark in commerce.

Here is the USPTO’s description of the process of a 1B filing, and again, all of the information comes from the USPTO website:

Step 1. Application filed. You file an application based on your bona fide intention to use your trademark in commerce. Your application is given a USPTO serial number. You can check the status of your application by entering the serial number in the TSDR database or calling the trademark status line at 571-272-5400, or toll-free at 1-800-786-9199 (select option 1, then option 2). In about three months go to step 2.
Step 2. USPTO reviews application. If your application meets the filing requirements, it’s assigned to an examining attorney, who reviews it to determine whether federal law permits registration of your trademark. Filing fees are generally not refunded, even if your application is later refused registration. In about one month go to step 3a or step 3b.


Step 3a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8…

In summary, determining whether or not a trademark is appropriate for your business is best determined after consulting with a trademark attorney. To book a consultation, reach out to us at www.paigehulse.com/contact.

 

 

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