A trademark registration grants the owner an exclusive right to use their mark in connection with the goods and services listed in their registration. The path to achieving this legal protection in the US takes 6 months in a straightforward case where no legal issues are raised by the USPTO or third parties.
Though most people wouldn’t build a home on a random piece of land, this is precisely what less experienced companies do with their brands, only to discover that their brand is infringing on someone else’s pre-existing brand.
In its most basic form, a trademark search replicates the work a USPTO Examining Attorney does when they examine a trademark application, verifying formalities and checking for conflicting trademarks. A more advanced search will consider common law usages too, searching through the internet, social media, trade journals, and other government and commercial records.
A search report will identify and rank the risks connected to a specific proposed trademark. The key word here is “proposed” trademark: one should conduct a trademark search before they ever use the trademark. If that search report shows an acceptable level of risks (to be transparent, it’s nearly impossible to have a trademark with absolutely no risk, so don’t be discouraged when a search report identifies risks), then a trademark application should be filed immediately.
The Trademark Application
Perhaps the most significant part of an application is the section related to goods and services. Since a registered trademark is only an exclusive right in connection with goods and services, which goods/services are listed, and how they are listed, have a huge effect on the future of the trademark. Directly related to this issue is how many Classes the trademark application must contain, since each Class of goods/services will require its own application fee. Whether the USPTO accepts the trademark, whether the problem can be solved if the USPTO refuses the trademark, whether a 3rd party will oppose your trademark, whether your goods/services list has a “fallback” position so that you can negotiate a settlement with a potential opposer, and whether you’ll be able to stop an infringer are all directly related to how you draft the goods/services list. Yes, it is that important.
Related to this, you will also need to indicate whether you are currently using the trademark in commerce in relation to some or all the goods/services. If you indicate the mark is in use, you will need to provide a “specimen”, or evidence, of trademark use. A specimen has many requirements, but essentially the mark needs to appear in the specimen exactly as it’s applied for, and it needs to be clear from the specimen alone that the good/service is actually being sold.
If there are goods/services which are not currently being sold under the mark, then an “intent-to-use” application is appropriate. With these types of applications, the specimen of use will not be required until after the entire examination, approximately 6 months if there are no legal challenges.
Initial USPTO Examination
Once an application is filed, the USPTO takes on average 3 months to assign an Examining Attorney (“EA”) to conduct a review. The EA will examine whether the application can proceed to the “Publication” or “Opposition” period, reviewing the issues below, among others:
Whether the goods and services are clearly listed and not too broad or vague
Whether the specimen(s) sufficiently demonstrates that the mark is being “used in commerce” with the goods/services
Whether the mark is descriptive of the goods/services
Whether mark is legally similar to any pre-existing trademark applications or registrations
If the EA finds an issue, they will issue a preliminary refusal of the trademark application, an “Office Action”. Between 65 and 80% of all applications are issued an Office Action, so this is something that all applicant’s should prepare for. If an Office Action is issued, an applicant will have 6 months to respond, although it is recommended to respond sooner than that if the goal is to achieve registration quickly.
Once all the legal issues in an Office Action are resolved, or if there was no Office Action was issued to begin with, an application will proceed to the “Publication” or “Opposition” period.
The Publication/Opposition Period
This is a 30-day period where marks are published in the Federal Gazette, which is a searchable PDF (yes, it’s the federal government we’re talking about) published every week containing all the trademark applications that have reached this stage. The purpose is for any trademark owner to monitor new applications for any marks that may legally conflict with their trademark registrations. In practice, most brand-critical companies actively monitor the Federal Gazette with a trademark attorney armed with trademark monitoring software. The software will regularly crawl the Federal Gazette and other USPTO databases, and sends notifications to the trademark attorney when it finds any new trademark which may contain some risk for that brand. The attorney and the brand owner will review and prioritize these risks, and then take appropriate action to achieve their goals.
During the Opposition period, any 3rd party may either file a Notice of Opposition, or an extension of time to oppose. In some cases, a potential opposer will reach out directly to a trademark applicant to try and negotiate a coexistence agreement prior to filing the opposition. This is because an opposition proceeding at the USPTO may consume a large amount of resources, as these types of proceedings are in fact a form of federal litigation, including a long discovery period (including depositions and expert witnesses) and trial (usually by written arguments).
If no opposition is filed, or once an opposition proceeding has been resolved, the trademark will become formally registered if it was an “in-use” application. In the case of an “intent-to-use” application, a Notice of Allowance will be issued, giving the applicant 6 months to provide a Specimen of Use. If the trademark isn’t used in commerce by that deadline, don’t fret. Applicant’s may request up to five, 6-month extensions, totaling 3 years from the initial Notice of Allowance. Both the filing of the Specimen and extensions of time require extra fees to be paid to the USPTO on a per-Class basis.