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Trademark Application Process

SUMMARY OF TRADEMARK PROSECUTION
Aside from a few exceptions, trademarks are registrable if:

    1. There is not a likelihood of confusion with respect to other registered trademarks on goods or services in the same or similar fields to the same or similar customers, or

  1. The trademark is not merely descriptive of the products or services with which the trademarks are used.

 

Generally, a trademark search is conducted electronically prior to filing to see if there are any U.S. trademark registrations or applications which could be considered to be confusingly similar to the trademark being evaluated, in order to determine if the United States Patent & Trademark Office (USPTO) would cite registrations or applications to prevent registration (an application cannot prevent registration but could prevent registration of subsequently registered). If the search indicates there are no references which would bar a registration, an application is prepared designating the goods or services with which the trademark is used or is to be used; or the goods or services of the corresponding foreign application or registration, if the U.S. application is to be based on the foreign application or registration.

Trademark applications generally are based on one of the following three bases:

    1. The goods or services with which the trademark is to be used are already in use in interstate commerce or commerce between the United States and a foreign country; or

    1. There is a bona fide intent to use the trademark for the designated goods or services (an Intent-To-Use (ITU) application); or

  1. There is a corresponding application or registration for the trademark in a foreign country.

 

An application can have as an effective filing date, the filing date of a corresponding foreign application, if the U.S. application is filed within six months of the foreign filing date.

United States trademark applications are generally filed electronically. Office actions issued by the USPTO are generally issued electronically, and must be responded to within six months of the issuance of the office action.

An ITU application cannot be registered until the trademark has been used in interstate or U.S.-foreign commerce. An amendment to allege use can be filed before the trademark is published for opposition (discussed below), or a statement of use must be filed subsequent to publication. Extensions of time can be obtained for filing a statement of use for three years following publication.

Once a trademark in an application is found to be registrable, it is published for opposition in the Official Gazette of the USPTO. Anyone who feels they would be damaged if the trademark that is published is registered, can file a Notice of Opposition within 30 days of publication in the Official Gazette, setting forth the reasons the published trademark should not be registered. The applicant has a period of time to file an answer. The Trademark Trial and Appeal Board (TTAB) of the USPTO sets forth a schedule designating the discovery and testimony (or trial) periods. The parties then go through opposition proceedings. Trademark oppositions are often settled.