Trademark Basics ...

Trademark rights arise from use of a trademark in commerce. As long as you place a trademark on goods sold or distributed in commerce (in a manner indicative of a trademark), or as long as you render services while using a service mark on advertising, trademark rights will exist. It then becomes a question of proof and priority.

So then, why file for trademark registration? Here are several advantages:

• In the event two or more persons claim rights to the same or similar trademark, the owner of a trademark registration is legally presumed the owner of the trademark.

• It provides notice to others that a trademark is already taken, and that others should not adopt the same or similar trademark for the same or related goods or services

• It evidences ownership in intellectual property which can be sold or licensed, or serve as a corporate asset.

• A federal trademark registration applies nationwide and is not limited by region or state.

• It can serve as a basis for filing trademark applications in other countries.

• It can be used to stop the importation of infringing goods into the United States by recording the trademark registration with US Customs and Border Protection.

• It facilitates litigation matters by establishing constructive notice and providing standing in federal court.



Trademark Process ...

We have prepared a flow chart to make the trademark process understandable which you can view below.

Below is a basic summary of the typical trademark process:

The trademark process normally begins by clearing a prospective trademark. This is done by performing a trademark search of the federal trademark register, all 50 state trademark registers, and common law sources (e.g., publications, business directories, internet).

If the trademark is available, a trademark application can be filed; however, it will not be examined until at least 3 to 6 months after the filing date. If a Trademark Examiner issues a refusal, an applicant will have six months to respond. If the response is not satisfactory, the Trademark Examiner will issue a final refusal. At that point, the applicant will have six months to either appeal the decision or file a Request for Reconsideration to overcome the final refusal.

If a trademark application is approved, it will be published for opposition to allow the public an opportunity to oppose the registration of the trademark. If an application is not opposed within 30 days (unless a request for an extension to oppose is filed), it will either proceed to registration or a Notice of Allowance will be issued.

A Notice of Allowance is issued if an applicant could not show use of the trademark in commerce at the time the application was filed. Because evidence of use of a trademark is a prerequisite to registration for most trademark applications, an applicant who could not prove use of the trademark in the initial application must do so later. Evidence of trademark use is shown by filing a Statement of Use within six months of issuance of the Notice of Allowance.

If the Statement of Use is acceptable, the application will proceed to registration. If it is not acceptable, a refusal will be issued giving the applicant six months to provide acceptable evidence of use. If the evidence ("specimen") is not acceptable again, the Trademark Examiner will issue a final refusal. At that point, the applicant will have six months to either provide an acceptable specimen or appeal the decision.



Trademark Oppositions ...

Any person who believes that he or she would be damaged by the registration of a trademark may oppose the registration of a trademark by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). A Notice of Opposition is similar to a Complaint filed by a Plaintiff in that it contains allegations identifying the grounds for opposing an application. The Defendant is the applicant seeking registration of a trademark. The applicant must file an Answer to the Notice of Opposition. Thereafter, an opposition proceeds in a manner similar to litigation, requiring initial disclosures, conferences between the parties, a discovery period, a testimony (trial) period, the opportunity to file motions, and the submission of briefs. The Federal Rules of Civil Procedures, the Federal Rules of Evidence, and the TTAB Manual of Procedure (TBMP) govern the proceedings. The TTAB may only affirm or deny the opposition, but may not grant damages or issue an injunction.



Trademark Cancellations ...

Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. A cancellation proceeding is similar to an opposition proceeding, but filed against a registered trademark (and not a trademark application). The procedures are virtually the same (e.g., initial disclosures, conferences between the parties, a discovery period, a testimony "trial" period, the opportunity to file motions, and the submission of briefs). However, since the trademark is already registered, the Defendant (registered trademark owner) has the benefit of a legal presumption of trademark ownership. In lieu of a Notice of Opposition, a Petition to Cancel is filed.



Trademark Ex Parte Appeals ...

Whenever a Trademark Examiner issues a Final Office Action ("final refusal"), the applicant has the option of filing an appeal to the Trademark Trial and Appeal Board (TTAB). An Ex-Parte Appeal is a proceeding between the applicant and the Trademark Examiner who issued a final refusal. The applicant attempts to persuade the TTAB to withdraw the Trademark Examiner's final refusal and the Trademark Examiner attempts to defend his decision to maintain the final refusal. The TTAB will either maintain the Trademark Examiner's final refusal or reverse it. While it is difficult to overcome an Examiner's final refusal before the TTAB, it is important to note that many Examiners also decide to withdraw the final refusal after an Ex-Parte Appeal is filed, rather than risk a reversal before the TTAB.



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