- Tutorial Contents
- Introduction - Basics, Filing Basis,
- USPTO Examination - Requirements, Refusals, Certificate of Registration
- Application Forms - Using TEAS, Identification of Goods & Services
- Making a Trademark Drawing
Minimum Requirements
Submitting the minimum requirements just get you a filing date and not a registered trademark. Have everything finished ASAP before your full examination. To receive a filing date, the applicant must provide at least the following items:- A completed application form with your correct name, a name and address for correspondence, and a listing of the goods and/or services.
- The appropriate fee
- A drawing of the mark to be registered
- If the application is based on actual use in commerce, three specimens for each class of goods or services claimed in the application.
Full Examination
After receiving a filing date, the application undergoes a complete review that includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimens.If the examining attorney determines that the mark cannot be registered, the examining attorney will send you a letter (office action) listing any grounds for refusal and any corrections required in the application.
The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned.
Final Refusal
If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.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.
Notice of Publication
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 USPTO. Think of publication as the announcement of your trademark registration to the public.The USPTO 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 USPTO will publish the application with the earliest effective filing date first.
Does Anyone Contest Your Right To Register?
Anybody who believes they may be damaged by the registration of a trademark has 30 days from the date of publication in the Gazette to file an opposition to that 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
Notice of Allowance
If the application was based upon use in commerce, the USPTO will register the mark and issue a registration certificate about 12 weeks after publication.If, instead, the application was based upon an intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about 12 weeks after publication. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either use the mark in commerce and submit a STATEMENT OF USE, or request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE.
If the STATEMENT OF USE is filed and approved, the USPTO will then issue the trademark registration certificate.
