Once the United States Patent and Trademark Office (USPTO) determines a trademark application meets the minimum filing requirements, it will assign an application serial number and forward it to an examining attorney. The trademark examination period can last several months and can potentially conclude with an approved trademark or a denial. Therefore, it is critical to have a strong understanding of the USPTO trademark examination. Intellectual property lawyers from War IP Law, PLLC help guide applicants through this process. You can learn more by calling (202) 800-3754.
Review by Examining Attorney
The examining attorney works for the USPTO. They are responsible for reviewing the application to determine if it meets all applicable rules and laws. The examining attorney does not represent the applicant.
As part of this process, the examining attorney will generally complete these steps:
- Check if the application complies with all rules and statutes
- Check if the application includes all required fees
- Review if the applicant complied with the filing basis requirements
- Search the USPTO’s database of registered and pending trademarks for conflicting marks
- Examine the written application, the drawing, and any submitted specimen
- Research whether the trademark has meaning in the applicant’s particular industry
- Review the applicant’s identification of goods or services
During the period of time that your trademark is being reviewed by an examining attorney at the USPTO, you will not have the opportunity to know where they are in the process, or their concerns. Applicants must wait until the examining attorney from the USPTO makes a determination regarding their trademark application.
Requirements for a Trademark
There are specific requirements that must be met to register a trademark. The applicant must first identify the type of mark they plan to use, such as:
- A standard character mark
- A stylized or design mark
- A sound mark
The applicant must also precisely identify which goods or services they will use the mark on. The mark must be distinctive enough that it does not cause confusion with other trademarks that have already been registered or applied for. The applicant can search for similar trademarks as part of their research process. While an applicant can attempt this search on their own, there are nuances and important steps they might miss due to their lack of familiarity with trademark law.
A trademark attorney is required if the applicant is domiciled in another country. While a trademark attorney is not required for domestic applicants, an intellectual property lawyer from War IP Law, PLLC can help with every stage of the trademark application process.
The examining attorney can make one of several decisions about the application, including:
Approval of the Trademark for Publication
If the USPTO examining attorney determines the application meets all legal requirements for registration and there are no other issues present at the time to prevent registration, they will approve the trademark for publication. There are still a few more steps in the process to complete before registration of the trademark occurs, including:
- Publication of the trademark for opposition
- Issuance of the notice for allowance for an intent-to-use application
- Completion of the statement of use for an intent-to-use application
- Payment of additional fees for an intent-to-use application
Issuance of an Office Action
If the USPTO determines the application is not registrable, the examining attorney will issue an office action. This is an official letter that explains why the registration is being refused. If applicable, it will contain suggestions for fixing problems with the application. It will also include a date that serves as a deadline for the applicant to cure the problems, if applicable. If the applicant corrects all of the problems noted, their trademark can still be approved for publication.
Issuance of a Final Office Action
If the response does not correct all of the outstanding issues or if the problems cannot be cured, the examining attorney sends a final office action that explains the trademark will not be registered. The applicant can appeal the decision to the Trademark Trial and Appeal Board. The applicant must file their appeal within six months of the final refusal to register’s mailing date. If the applicant prevails on appeal, the examining attorney approves the trademark for publication. The process would then proceed as described above.
Abandonment of Application
If the applicant misses a filing deadline, fails to respond to an office action within the applicable time period, or loses their appeal to the Trademark Trial and Appeal Board, the application is considered abandoned. Generally, the applicant must respond to an office action within six months of the issue date of the office action, otherwise, the application is determined abandoned. In some situations, it may be possible to revive an abandoned application.
Reasons a Trademark Application May Be Denied
The USPTO identifies the following as common problems that can lead to a denial for a trademark:
- The application identifies the wrong owner of the trademark
- The applicant did not correctly identify the goods or services the trademark would be used on
- The trademark is generic and is the everyday name for a good or service
- The trademark is a phrase or slogan used in everyday speech
- The proposed trademark is likely to cause confusion with a registered or applied for trademark
- The trademark simply describes an aspect of the goods or services
- The trademark is merely a surname
- The trademark uses a person’s name that the applicant does not have permission to use
- The specimen the applicant submitted was the wrong type or failed to show use as a trademark
Some of these problems are curable, so you can correct them and still potentially register your trademark. Others are incurable, and only a completely new USPTO application will give you a chance of obtaining a trademark.
Contact an Experienced Intellectual Property Lawyer for Help Understanding USPTO Trademark Examination
Trademarks can protect your goods or services. However, the greatest protection comes from trademarks that are registered and maintained with the USPTO. To complete registration, you must go through the trademark examination process. An intellectual property lawyer can assist with every aspect of the trademark application process. The lawyers from War IP Law, PLLC have a strong understanding of the USPTO trademark examination process and can explain what you can expect. You can learn more by calling us at (202) 800-3754.