The Trademark Registration Process Part 2

Posted by on Oct 8, 2013

Once the use in commerce (or intent to use) requirement is satisfied by the aspiring trademark registrant, the next step is to file an application for Federal registration with the United States Patent and Trademark Office (“USPTO” or “Trademark Office”).  The use requirement is referred to as the “basis for filing” by the USPTO.

Trademark Application

The application covers formalistic requirements that identify both the filer and necessary details about the trademark.  For instance the name of the filer, correspondence address, drawing of the mark, type of goods/services, dates of use, color features, and sound features are all features of an application.  A sample trademark application filing form, using the USPTO’s electronic TEAS system may be found here.  The document is quite complex, being concerned, among other things, with identifying the exact class of goods or services, and the USPTO itself recommends that you consult an experienced trademark attorney to complete the formal application.  There are two potential application fees.  The lower fee is for a “TEAS Plus” application and is $275 per class of goods or services, however there are stricter requirements.  For instance the listing of identification of goods or services must fall within an already established category from the USPTO’s list.  The applicant must agree to conduct all correspondence electronically, and pay the fees up front (as well as many other requirements).  If these requirements can’t be met, the applicant may use a regular TEAS application and pay $325 per class of goods or services.

USPTO Examination

Roughly six months after filing the application the USPTO appoints a trademark attorney to conduct an examination or evaluation.  In addition to the formalistic requirements, a mark must not have defects that make it unregistrable.  We will only focus on some of the more common defects here.

A mark may not contain immoral, deceptive, fraudulent, or “scandalous” material.  This is a flexible standard, and something that may have been considered scandalous in the past may be considered humorous at present.  In the past, marks related to contraceptive devices have been rejected as scandalous, but that issue has largely abated.

A mark should not mock or (falsely) suggest endorsement or association with people, institutions, or national symbols.  A mark should not consist of a living person’s name, likeness, or signature, unless consent is given in writing.  A mark should not be confusingly similar to another mark already registered or a previously used and non-abandoned mark (recall this information would be obtained via the Trademark Search performed in part 1).

The examiner also asks the question “Is this mark merely descriptive?”  If so, he will reject it unless the applicant is able to prove that secondary meaning exists.

Along similar lines, the examiner examines the question of “mis-descriptiveness.”  This is a situation where the mark suggests something that is not accurate, but does not arise to the level of deception or fraud.  This dichotomy may be thought of as a spectrum or a question of degree.  There are two basic cases of mis-descriptive marks.  The first suggests an association that is not true: for instance “Garmon Brothers Dance and Jazz Troupe” is mis-descriptive if none of the members are related.  The other case is geographic mis-description – for instance “Boston Elegant Cream Cheese” if the product has no connection with the city of Boston.  In cases of mis-description, the mark is not registrable unless the applicant can establish secondary meaning.

The examiner may also make technical objections, such as more specific identification, that require the applicant to make chances to the application.

Once an application is approved by the examiner, it is published for opposition.  This allows anyone who may be harmed or damaged by the mark (eg a competitor, a living person who believes their identity is being used without permission, etc) to oppose or attack the registration of the mark via the filing of documents with the USPTO.  A special appeals board (the TTAB) within the USPTO hears all such oppositions, which are frequently as complex as full-on judicial trials.

Once all hurdles are passed, the USPTO issues a notice of allowance, which requires additional fees and the filing of a statement of use.  Once those requirements are met, the USPTO issues a certificate of registration and the trademark becomes part of the Federal Register.