Filing Date - Filing Receipt
The PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.
Examination
About four months after filing,
an examining attorney at the PTO reviews the application and determines
whether the mark may be registered. If the examining attorney determines
that the mark cannot be registered, the examining attorney will issue a
letter listing any grounds for refusal and any corrections required in
the application. The examining attorney may also contact the applicant
by telephone if only minor corrections are required. The applicant must
respond to any objections within six months of the mailing date of the
letter, or the application will be abandoned. If the applicant's response
does not overcome all objections, the examining attorney will issue a final
refusal. The applicant may then appeal to the Trademark Trial and Appeal
Board, an administrative tribunal within the PTO.
A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
Publication for Opposition
If there are no objections, or if
the applicant overcomes all objections, the examining attorney will approve
the mark for publication in the Official Gazette, a weekly publication
of the PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant
indicating the date of publication. In the case of two or more applications
for similar marks, the PTO will publish the application with the earliest
effective filing date first. Any party who believes it may be damaged by
the registration of the mark has 30 days from the date of publication to
file an opposition to registration. An opposition is similar to a formal
proceeding in the federal courts, but is held before the Trademark Trial
and Appeal Board. If no opposition is filed, the application enters the
next stage of the registration process.
Issuance of Certificate of
Registration or Notice of Allowance
If the application was based upon
the actual use of the mark in commerce prior to approval for publication,
the PTO will register the mark and issue a registration certificate about
12 weeks after the date the mark was published, if no opposition was filed.
If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE (see forms and instructions in this booklet). The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.
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