Overview of the Trademark Process

Overview of the Trademark Process

Overview of the Trademark Process

Suspension

Generally, a suspension of your trademark application occurs when someone else has filed a trademark application before you filed your trademark application, and the Examining Attorney from the USPTO believes both trademark applications are confusingly similar to each other. Because the prior trademark has not yet registered, it is not grounds for refusal of your registration. Therefore, the Examining Attorney will "suspend" your trademark application indefinitely until the other trademark application either (a) registers, in which case the Examining Attorney will issue a first office action, or (b) goes abandoned, in which case the Examining Attorney will take your application off suspension and move it toward registration.

Although you do not have to take any action while your trademark is suspended, you may contact the Examining Attorney during the suspension period and present arguments as to why your trademark should be taken off suspension. For example, if your trademark is for KLASSY KING MOTEL, and your application is suspended pending an earlier filed application for the CLASSY QUEEN RESTAURANT, then you might choose to argue that the two marks are not likely to be confused. If the Examining Attorney agrees, he or she will take the application off from suspension and move it toward registration.

In the case of an international trademark application, the Examining Attorney will suspend your US trademark application if you claimed priority back to the date of your foreign filed trademark application. The Examining Attorney will take the application off suspension once you submit your international registration certificate to the USPTO.

Office Action

An office action will issue when the Examining Attorney for the USPTO believes there is a reason why your trademark should not immediately proceed to registration. There are two main types of office actions, "Non-substantive" office actions, and "Substantive" office actions.

Substantive office actions occur when the Examining Attorney believes there is a reason your trademark should not proceed to registration based on the grounds explicitly stated in the Lanham Act (trademark law). The most common substantive office actions are based on "Merely Descriptive" and "Likelihood of Confusion" grounds. A trademark is "Merely Descriptive" if the trademark merely describes the goods or services listed in its trademark application. A trademark causes "Likelihood of Confusion" if another previously registered trademark is so similar that consumers viewing both trademarks would be confused as to the source or origin of the goods or services offered under the trademarks. Other grounds for substantive office actions include deceptiveness, immoral, scandalous, or disparaging trademarks, trademarks which are merely a surname, trademarks which are government insignias, trademarks involving an individual's name or likeness, and geographic deceptively misdescriptive trademarks. Generally, it is best to have an attorney handle responses to substantive office actions, as these responses require legal arguments. If the Examining Attorney accepts your arguments, your application will move towards registration. If the Examining Attorney does not accept your arguments, the Examining Attorney will issue a final office action (explained below).

It is very important to respond to the office action within the six month deadline, because if you do not, your trademark application will go abandoned. The USPTO does not issue reminders of the date to respond to an office action. Therefore, you must track the date and respond appropriately by the date set forth in the office action (6 months from the date the office action issues).

Note that sometimes, an office action will issue that has Non-substantive and Substantive issues, or cites more than one Substantive ground for refusal. You must respond to all the Examining Attorney's arguments if you want your trademark application to move forward.

Final Office Action

If the Examining Attorney does not accept the arguments you made in your response to the office action, or there are procedural defects that remain, the Examining Attorney will issue a final office action. The final office action will explain why the Examining Attorney did not agree with your arguments, or did not accept your attempt to correct Non-substantive issues with your trademark application.

You can respond to a final office action by filing a request for reconsideration and/or an appeal. These two procedures are explained in further detail, below. However, filing a request for reconsideration does not "pause" the six-month deadline to file a notice of appeal. Thus, if you file a request for reconsideration and you have not heard a positive response from the USPTO before the six-month deadline, you should file a notice of appeal. If you do not, your trademark application will go abandoned.

Request for Reconsideration

You can submit a brief or a form with the USPTO that asks the Examining Attorney to reconsider his or her decision to refuse to let your trademark application proceed toward registration.

In most cases, a request for reconsideration brings in a new piece of evidence, or addresses a new argument that was not made previously. If the Examiner accepts the arguments you made in your request for reconsideration, it does not mean that your application will be approved. It just means that the Examiner will consider the new evidence, and once he or she has done so, then a new final refusal can issue, or the Examiner can permit the application to proceed and withdraw his or her refusal.

However, if the Examiner refuses to reconsider, then there is no new final refusal; the original date of the final refusal continues to be the deadline, and the application must file a notice of appeal by that date or the application will go abandoned. Thus, it is important to keep the original date of the final refusal in mind, even if you file a request for reconsideration, because if your request for reconsideration is refused, then you may miss the date for appeal. When it comes to filing a notice of appeal, the first part is easy: you file a notice and pay a fee. But, then, once the Examiner has passed on your request for reconsideration, if the refusal is maintained, then you will have to file an appeal brief, making legal arguments for why the Examiner was wrong about the grounds for refusal to register your mark.

Appeal

You can submit an appeal to the "boss" of the Examining Attorney, the Trademark Trial & Appeal Board (TTAB). Typically, attorneys handle appeals before the TTAB.

To appeal, you file a notice of appeal and pay the fee to the TTAB. Then, you submit a brief to the TTAB. The TTAB considers the history of the trademark application, the evidence submitted in the office actions and responses, and the relevant case law. The TTAB then issues a decision. If you succeed in the appeal, your trademark moves toward registration. If you do not succeed, you can either appeal to the "boss" of the TTAB, the Federal Circuit, or you can appeal to a U.S. Federal Court. If you do not appeal after losing before the TTAB, your trademark application will go abandoned.

Opposition Proceeding

After your trademark application is published, third-parties have 30 days to either "oppose" or "extend the time to oppose" your trademark application. If someone opposes or extends time to oppose your trademark, your trademark application is suspended pending the outcome of the proceeding.

An opposition proceeding is very similar to a lawsuit. There is a discovery period, a briefing schedule, and procedural technicalities. Thus, if you do not have legal representation yet, you should consider hiring an attorney.

A person or company ("opposer") can file an opposition proceeding by submitting a "complaint" to the Trademark Trial & Appeal Board ("TTAB"). The complaint will allege the grounds the opposer has for bringing the action. The most common grounds for an opposition are likelihood of confusion between the opposer's trademark(s) and your trademark. You must answer the opposer's complaint within the proper time, or else the opposer will automatically win, and your trademark will not register. After you answer the complaint, both you and the opposer conduct discovery and submit briefs. While there is no physical trial, oppositions are "paper trials" where the TTAB acts as the judge, and decides the case based on the evidence, briefs and case law. If you succeed in the opposition, your trademark proceeds toward registration. If you do not succeed, the TTAB will not allow your trademark to register.

Notice of Allowance ("NOA")

A NOA issues when an intent to use trademark application (an application with a 1(b) filing basis) passes through publication, and is approved. If your trademark application was based on use (an application with a 1(a) filing basis), then you will not receive an NOA.

After a NOA issues, you have six months to either (a) file a specimen and a statement of use ("SOU") with the USPTO showing proof that you are using the trademark on or in connection with the goods/services listed in your trademark application; or (b) file a request for extension which extends the time to file a specimen and SOU for six months.

Statement of Use ("SOU")

Applications based on intent to use do not move to registration until a SOU is filed. The SOU must be filed within six months of the notice of allowance. However, if you are not prepared to state use (for example, the product or service has not yet launched and is not yet in use), then you may file up to five (5) extensions of six (6) months each, extending the time to file the SOU. Each extension filing requires a fee, and must be done prior to the deadline, or the trademark application will go abandoned. Missing the date to file the SOU, or not filing an extension of time to file the statement of use, results in abandonment.

Statement of Use ("SOU") Rejected

The Examining Attorney who receives your SOU will review the SOU. If the SOU does not comply with the USPTO's requirements, the Examining Attorney can issue a post-publication office action rejecting the SOU. In this post-publication office action, the Examining Attorney will explain the defects with the SOU, and invite a response. You must respond to the post-publication office action within six months, or else your trademark application will go abandoned.

Cancellation Proceeding

A cancellation proceeding is very similar to a lawsuit. Cancellation proceedings involve discovery, briefing, and formal procedural requirements. Thus, if you do not have legal representation yet, you should consider hiring an attorney.

A cancellation proceeding starts when a person or company ("petitioner") submits a complaint to the Trademark Trial & Appeal Board ("TTAB"). The complaint will allege the grounds for cancelling your trademark, such as fraud or non-use/abandonment. You must file an answer to the petitioner's complaint with the TTAB within the proper time. If you do not answer the petitioner's complaint, your trademark will be cancelled.

After you answer the petitioner's complaint, both you and the petitioner conduct discovery and submit briefs. While there is no physical trial, cancellations are "paper trials" where the TTAB acts as the judge, and decides the case based on the evidence, briefs and case law. If you succeed in the cancellation, your trademark remains registered. If you do not succeed, the TTAB will cancel your trademark registration.

Section 8 & 15 (Affidavit of Use and Incontestability)

Section 8 & 15 paperwork may be filed between the 5th and 6th year after your trademark registers. The Section 8 Affidavit of Use is mandatory if you want to keep your trademark from going abandoned. A Section 15 Declaration of Incontesability is not required, but is considered to be beneficial for the reasons discussed below.

A Section 8 Affidavit of Use is a formal statement (which is legally binding) that your trademark is still in use for the goods and/or services listed in the trademark registration. You also must submit a specimen showing that the trademark is still in use to the USPTO. Your trademark will go abandoned if you do not file an acceptable Section 8 Affidavit of Use and pay the required fee.

A Section 15 Declaration of Incontesability makes your trademark registration "incontestable." An "incontestable" federal trademark registration is conclusive evidence of (1) the validity of your trademark; (2) your registration of the trademark; (3) your exclusive ownership of the trademark; and (4) your exclusive right to use the mark with the goods/services listed in the application. The grounds for cancelling an incontestable trademark are also limited. For example, you cannot cancel an incontestable trademark for being merely descriptive.

Post Registration Office Action

Sometimes, the USPTO may issue a post registration office action for your trademark. It is most common for a post registration office action to issue when, for example, you renew your trademark but the USPTO does not accept the specimen you submitted to prove the trademark is still used in commerce. Just like the office actions prior to registration, you must respond to a post registration office action within the proper time frame of six months, or else your trademark will go abandoned.

Section 8 & 9 (Affidavit of Use and Renewal)

Section 8 & 9 paperwork is filed every 10 years after your trademark registers. A Section 8 Affidavit of use is a formal statement (which is legally binding) that your trademark is still in use for the goods and/or services listed in the trademark registration. You also must submit a specimen showing that the trademark is still in use. The Section 9 paperwork renews your trademark for another 10 years. If you do not file a Section 8 & 9 and pay the required fee, then your trademark will go abandoned.