Q. My attorney informed me that my trademark application was denied by the U.S. Patent and Trademark Office in a Final Office Action. Apparently, it could cause confusion with another trademark already registered. My attorney told me that I can appeal. What are the steps?
A. If the U.S. Patent and Trademark Office (USPTO) denies an application to federally register your trademark, you can appeal. You file the appeal with the Trademark Trial and Appeal Board (TTAB). You must file the within six months of the mailing date of the final refusal to register.
In order to overcome the trademark examining attorney's objections, you may need to make extensive legal arguments.
The TTAB renders decisions in ex-parte appeals approximately 10 weeks after all briefs have been submitted or after a hearing date.
The road to obtaining a trademark can be long and winding. The USPTO identifies steps in a trademark application. Here are just some of the steps:
1. Determine whether you need trademark, patent, or copyright protection.
2. Identify your mark format: a standard character mark, a stylized/design mark, or a sound mark.
3. Identify clearly the precise goods and/or services to which the mark will apply.
4. Search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration. (You should also search the Internet and state or local records to determine whether someone might claim common law rights to the trademark.)
5. Identify the proper "basis" for filing a trademark application. If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. This means you have a bona fide intent to use the mark in commerce. For example, you may want to wait to see if your trademark is registered before you spend money using it.
6. After you file an application and pay the processing fee, the USPTO will review the application. After the USPTO determines you met the minimum filing requirements, an application serial number is assigned and the application is forwarded to a government, examining attorney. This may take a number of months. The examining attorney reviews the application to determine if it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen when alleging use.
7. If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office Action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office Action, the applicant's response must be received within six months of the mailing date of the Office Action, or the application will be declared abandoned.
8. If the applicant 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, an administrative tribunal within the USPTO.
9. If the examining attorney raises no objections to registration, 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. The USPTO sends a notice of publication to the applicant stating the date of publication.
After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB.
The U.S. Patent and Trademark Office notes, "while you can represent yourself in a TTAB proceeding, you might wish to consider hiring an attorney to represent you. An opposition proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel."
10. Throughout the entire process, your attorney will be monitoring the progress of your application to ensure you don't miss any filing deadlines.
These are only some of the many steps involved in the trademark process. Your attorney can answer questions about your situation.
The USPTO states, "you are responsible for enforcing your rights if you receive a registration, because the USPTO does not police the use of marks."
While the USPTO attempts to ensure that other parties don't receive a federal registration for an identical or similar mark for or as applied to related goods or services, the owner of a registration is responsible for bringing legal action to stop a party from using an infringing mark.
An opposition is a proceeding in which one party seeks to prevent registration of another party's trademark. Under the law, if a party believes that he or she will be damaged by the registration of a mark, he or she can file an opposition.
A cancellation is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he or she will be damaged by the registration may file a petition to cancel.
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