Trademark Protection Process

Selection and US Registration

2006

Trademark Protection Overview

• Selection– Choosing a mark that

can be protected from use by others

– Choosing a mark in which others do not already own rights

• Registration– Reserving the right to

use the mark when the business is ready

• Protectability– Marks that describe

the goods or services are more difficult and costly to protect

– Marks that name a completely new category of goods should be paired with a new generic term to avoid losing control of the mark

Trademark Protection Overview

• Selection– Choosing a mark that

can be protected from use by others

– Choosing a mark in which others do not already own rights

• Registration– Reserving the right to

use the mark when the business is ready

• Availability– Others can attain rights

through either use or registration

• Search the USPTO• Search other sources for

“common law” rights

– Assessment of risk depends on similarity of marks and goods, renown of the earlier mark, and other considerations

Trademark Protection Overview

• Selection– Choosing a mark that

can be protected from use by others

– Choosing a mark in which others do not already own rights

• Registration– Reserving the right to

use the mark when the business is ready

• Registration– File a federal intent-to-

use application ASAP• Upon registration, rights

date from filing• Showing up in others’

searches may deter competing uses

– Respond to objections and submit proof of use of the mark in order to secure your ®

Federal Registration Process

• Filing– Minimal requirements– Mark, goods, and

ownership are key

• Examination• Publication• Opposition• Allowance/Use• Registration

• Filing– Must meet minimum

requirements to secure the filing (priority) date

– Mark usually cannot be changed after filing

– Goods cannot be expanded after filing

– Changes of ownership can be burdensome or even can invalidate the application

Federal Registration Process

• Filing

• Examination– Office Action typically

issued after 6-7 mos.

– Allowed 6 mos. to respond/appeal

• Publication

• Opposition

• Allowance/Use

• Registration

• Examination– Common issues:

• Clarifying the goods, esp. when technical

• Paying additional fees when goods cover multiple “classes”

– Less common issues:• Mark rejected as merely

descriptive• Mark rejected as likely

to cause confusion with an earlier filed mark

Federal Registration Process

• Filing

• Examination– Office Action typically

issued after 5-6 mos.

– Allowed 6 mos. to respond/appeal

• Publication

• Opposition

• Allowance/Use

• Registration

• Examination– Response process:

• Business decision: fight for broader rights (more time and $) or take what the Office gives?

• Many legal strategy issues come into play (affects the range of $)

• Responses take 1 to several weeks to draft and file; Examiner reads within 2-3 mos.

Federal Registration Process

• Filing

• Examination– Office Action typically

issued after 5-6 mos.

– Allowed 6 mos. to respond/appeal

• Publication

• Opposition

• Allowance/Use

• Registration

• Examination– Tough cases:

• Examiner issues a final refusal, you have the option to appeal to the Trademark Trial and Appeal Board (cost varies depending on the complexity of the case)

• You also can (1) give in on any outstanding requirements or (2) drop the application and rely on common law rights

Federal Registration Process

• Filing

• Examination

• Publication– 3-4 mos. after approval

• Opposition– Within 30 days after

publication

• Allowance/Use

• Registration

• Publication– Mark is published for

opposition after the Examiner approves it

• Opposition– 30-day deadline is

extendable– Can be based on

common law rights– Mini-litigation, but no

monetary remedies or injunction can issue

Federal Registration Process

• Filing• Examination• Publication• Opposition• Allowance/Use

– Must respond to Notice of Allowance within 6 mos. with proof of use

• Registration

• Allowance– Notice issues a few

mos. after the end of the opposition period (or post-opposition)

– Deadline is extendable in 6-month increments up to a max. of 3 years (the fees can add up!)

– Must use on all goods listed (or delete them) before ® will issue

Federal Registration Process

• Filing• Examination• Publication• Opposition• Allowance/Use

– Must respond to Notice of Allowance within 6 mos. with proof of use

• Registration

• Registration– Issues about 3 mos.

after approval of the Statement of Use

– Valid for 10 years but further proof of use is required after 6 years

– May be attacked based on earlier rights, non-use or generic meaning, or, during the first 5 years, descriptiveness

• File ITU Application

Summary: Registration Process

• 6-7 Months: Examination

• No Objection: Publication Scheduled

• Opposition Deadline: 30 days from Publication

• If No Opposition: Notice of Allowance

• 6 Months from Allowance: Statement of Use Due

• Statement of Use is Examined and, if accepted, Registration Issues!

• If there are objections, have 6 months to respond.

• Potential Opposer can Extend Deadline 90 Days

• If Examiner Objects to Specimens or Statement of Use, have 6 Months to “cure.”