Securing the rights to a trademark for commerce is a critical part of branding for many businesses. The distinctive logo, phrase, or sign identifies a particular product or brand, setting it apart from its competition and legitimizing it in the eye of consumers. Filing a trademark application correctly and on time is crucial. Business owners often benefit from consulting with intellectual property attorneys to ensure that their trademark application and examination with the United States Patent and Trademark Office (USPTO) proceeds quickly and smoothly. The intellectual property legal team at Polymath Legal PC can help guide applicants and intellectual property (IP) owners through the USPTO trademark examinations process and help them gain a better understanding of what to expect. Consider calling (833) 931-6418 today for more information.
Avoiding Common Mistakes
The USPTO is responsible for processing trademark applications and approving them for publication. Intellectual property attorneys can help draft the application and educate IP owners about the examination process, thus helping them to avoid common application problems. According to the USPTO, the following errors will likely require reapplication:
- Naming the wrong person or business as the trademark owner
- Describing the product or service poorly
- Matching an already existing trademark too closely
- Using a generic mark
- Using a common word or phrase
Application Review by an Examining Attorney
The USPTO employs examining attorneys to review trademark applications and determine if they meet the applicable statutes. These attorneys do not represent the applicants, so many IP owners choose to seek their own representation. The USPTO trademark examinations proceed according to the following steps:
- Ensure that:
- The application complies with current laws and regulations
- The application includes required fees
- The applicant complies with filing basis requirements
- Compare applicant’s trademark against the USPTO’s trademark database to check for conflicting trademarks
- Examine the submitted specimen
- Determine if the trademark has meaning in the applicant’s industry
- Review the identification of the applicant’s goods or services
These reviews can take weeks, and applicants are not provided with updates throughout the process. An applicant will only be advised after the USPTO’s examining attorney determines the validity of the trademark.
Understanding Trademark Requirements
The USPTO has specific requirements for trademarks. First, the applicant must identify the manner of trademark being submitted. Trademarks typically fall into three categories:
- A design or otherwise stylized mark
- Standard character mark
- Sound mark
The application process includes precisely identifying which goods or services the IP owner plans to use the trademark on. Trademarks must be distinctive enough to not confuse them with existing trademarks. An intellectual property lawyer can assist IP owners with the research process, though some trademark applicants opt to research on their own. Either way, looking for similar trademarks that have already been registered is a crucial step in the process.
The USPTO Examination Attorney Decision Process
Once the examination attorney reviews the application and trademark, he or she may either approve or deny the trademark for publication. However, if the applicant misses or misfiles the application, then the application may be denied, and other steps must be taken to secure the trademark.
Approved Trademark
If the application meets all legal requirements and the trademark has no conflict with existing trademarks, then the trademark will be approved for publication. Once the mark is approved, the applicant must take a few more steps to officially register the trademark, and each is time sensitive. First, the applicant must publish the trademark for opposition. This is a 30-day period in which members of the public may contest the trademark if they consider that its use will harm them. If another party contests the approved trademark, that party will file a Notice of Opposition, and the initial filing party will initiate a legal proceeding with the Trademark Trial and Appeal Board (TTAB) to determine the matter.
The publication of the approved trademark includes the following steps:
- Issue a notice of allowance for an intent-to-use application
- Complete the statement of use for the application
- Pay the associated fees with the intent to use application
Refusal of Trademark Registration
An Office Action is issued by the USPTO examining attorney if he or she finds that the application is not registerable. This is an official document sent to the applicant detailing why the registration was refused. The letter may contain suggestions for fixing any problems with the application and include a date for revising the application. If the applicant fixes the problems, the trademark may still be approved for publication.
However, if the revised application does not address all the issues noted in the initial office action, the trademark will not be registered. An applicant may appeal the decision with the TTAB within six months of the mailing date of the final office action letter. If the appeal is approved, then the process will move forward as usual. If a trademark applicant misses a deadline, fails to respond to communications from the examining attorney, or loses the TTAB appeal, the application will be considered abandoned. If you received an office action or are in the process of filing for a trademark, consider visiting with the experienced intellectual property attorneys at Polymath Legal PC to ensure your legal and financial rights remain protected.
Reasons for a Trademark Application Denial
The USPTO has several reasons to deny a trademark. Common problems that can cause an IP owner’s mark to be denied may include issues with the application, such as those mistakes mentioned above. Many trademark applications are required to include a specimen, either a sample or a photograph of the trademark as it will be used in commerce. The application will be denied if the submitted specimen does not adequately show the trademark in use or is the wrong type. A trademark may be denied for not being unique enough by using a generic name, colloquial term, or typical phrase used in everyday speech. Additionally, if the trademark is just a description of the product or a surname, it will be denied.
If the applicant’s trademark is deemed to cause confusion for consumers by being too similar to that of another good or service, it will be denied. If the examining attorney determines that the trademark contains a person’s name that the applicant is not permitted to use, then the USPTO will reject the application. Many issues can be corrected; however, some issues may require the applicant to submit an entirely new application.
An Experienced Intellectual Property Attorney Can Help
Trademarks are a vital part of branding goods and services. If you are a business owner looking to file a trademark application, the experienced intellectual property lawyers at Polymath Legal PC assist trademark applicants with the USPTO trademark examinations process. Consider calling (833) 931-6418 today to schedule a consultation and learn more about your legal rights.