Prior to filing any applications – and indeed before even making a final decision on a mark – we strongly recommend having a professional trademark search done to ensure that no one else is using the same or a confusingly similar mark. This is important because a trademark application includes a statement under oath by the applicant affirming that no one else is using the mark at the time of the application. Moreover, as a practical matter, one never wants to spend time and effort on launching, promoting and attempting to register a trademark only to have the PTO reject the mark because it has already been registered by someone else, or worse, to find oneself on the receiving end of a trademark infringement claim. The search is therefore a risk management tool as much as anything else. Trademark searches can be done by a professional search firm for a fee beginning at several hundred dollars (not including attorney review time).
Preparing the Application.
A U.S. trademark application is not unduly complicated and requires only some fairly basic information. Typically, the applicant (which can be a person or an entity) must provide its name and address, nationality (for a person) or its state of organization (for corporations and the like), a description and drawing of the mark, a description of the goods and/or services the mark is used to identify, the date(s) when the mark was first used, and sample labels or other “specimens” showing how and where the mark is actually used. As mentioned above, the application also includes a sworn statement from the applicant attesting to the accuracy of the information in the application and of the applicant’s claim of exclusive right to use the mark. Typically the most difficult aspect of preparing the application is drafting the description of goods or services, which must conform to certain arcane PTO conventions for phraseology, and at the same time should also be drafted broadly enough to cover the whole market in which the goods or services are sold. State trademark applications (discussed below) usually require the same data, with the additional requirement of documenting how and when the mark is used in the particular state.
Filing Fees. The filing fees charged by the PTO for a trademark application currently range from $275 to $375 per class of goods or services, depending on which application procedure is used (electronic filings are less expensive than paper, for example). The class of goods and services refers to an international classification of goods and services system used by the PTO and most other national trademark offices around the world to organize marks for pricing, searching and enforcement purposes. There are 45 classes covering virtually every conceivable product and service. For ITU applications, there is an additional filing fee of $100 per class to be paid later in the process, when the applicant submits its proof that the mark is actually in use.
Examination by the PTO.
Once a new application has been received by the PTO , it is then placed in queue to be assigned to a trademark examining attorney and begin the examination process, which typically takes six to eight months. As a result of the examination process, the examining attorney will either refuse registration or approve the mark for publication. A refusal of registration takes the form of an “Office Action,” in which the examining attorney sets forth the reasons for the rejection and gives the applicant six months to cure the defects or otherwise respond. Often, if the problems with the application are minor technicalities, they can be resolved over the telephone. An Office Action raising more serious substantive issues which must be addressed with a written response can add six to 12 months to the examination process. Such substantive issues may involve either a potential conflict with a registered mark or with the mark in an earlier-filed application, or a determination by the examining attorney that the mark is too “descriptive” to be entitled to trademark protection. An Office Action raising either technical or substantive matters is issued in the vast majority of cases.
Approval, Publication and Registration.
Once the mark is approved for publication, it will appear in the PTO’s Official Gazette about one to three months later, after which members of the public have 30 days to file notice with the PTO if they object to the mark being registered. If such a Notice of Opposition is filed, an opposition proceeding will be conducted before the Trademark Trial & Appeal Board (the “TTAB”), a panel of three administrative law judges within the PTO who adjudicate disputes over the registrability of trademarks. Procedurally, opposition proceedings are not unlike civil litigation in court, and they can be just as time-consuming and costly. On the other hand, if no one opposes the registration of the mark, either a Certificate of Registration or (in the case of an ITU application) a Notice of Allowance will issue, which can take another six to 12 weeks. From beginning to end, the entire application process can take 18 months to two years to get to this point (the current average is believed to be around 19 months). In the ITU context, after issuance of a Notice of Allowance the applicant has six months to file a sworn statement (including one or more specimens) establishing that the mark is actually in use; up to five extensions of this deadline are available for an additional fee, provided the applicant can show that it is making a bona fide effort to put the mark into use. This Statement of Use goes through a brief examination period, and if and when it is approved a Certificate of Registration will issue.
Final Refusal.
If, on the other hand, the examining attorney does not accept the applicant’s arguments in a response to an Office Action, the PTO will issue a final refusal. At that point, the applicant may file a request for reconsideration with the examining attorney and/or may appeal the matter to the TTAB. The applicant may also abandon the application at any point during the review process. This does not mean that the applicant cannot use the mark – it’s just not entitled to the benefits of federal registration. If, however, the problem with the application arises out of a conflict with a mark having priority over the applicant’s, it would often be inadvisable to use the mark because of the possibility of a claim of infringement.
Trademark Search.
Prior to filing any applications – and indeed before even making a final decision on a mark – we strongly recommend having a professional trademark search done to ensure that no one else is using the same or a confusingly similar mark. This is important because a trademark application includes a statement under oath by the applicant affirming that no one else is using the mark at the time of the application. Moreover, as a practical matter, one never wants to spend time and effort on launching, promoting and attempting to register a trademark only to have the PTO reject the mark because it has already been registered by someone else, or worse, to find oneself on the receiving end of a trademark infringement claim. The search is therefore a risk management tool as much as anything else. Trademark searches can be done by a professional search firm for a fee beginning at several hundred dollars (not including attorney review time).
Preparing the Application.
A U.S. trademark application is not unduly complicated and requires only some fairly basic information. Typically, the applicant (which can be a person or an entity) must provide its name and address, nationality (for a person) or its state of organization (for corporations and the like), a description and drawing of the mark, a description of the goods and/or services the mark is used to identify, the date(s) when the mark was first used, and sample labels or other “specimens” showing how and where the mark is actually used. As mentioned above, the application also includes a sworn statement from the applicant attesting to the accuracy of the information in the application and of the applicant’s claim of exclusive right to use the mark. Typically the most difficult aspect of preparing the application is drafting the description of goods or services, which must conform to certain arcane PTO conventions for phraseology, and at the same time should also be drafted broadly enough to cover the whole market in which the goods or services are sold. State trademark applications (discussed below) usually require the same data, with the additional requirement of documenting how and when the mark is used in the particular state. Filing Fees. The filing fees charged by the PTO for a trademark application currently range from $275 to $375 per class of goods or services, depending on which application procedure is used (electronic filings are less expensive than paper, for example). The class of goods and services refers to an international classification of goods and services system used by the PTO and most other national trademark offices around the world to organize marks for pricing, searching and enforcement purposes. There are 45 classes covering virtually every conceivable product and service. For ITU applications, there is an additional filing fee of $100 per class to be paid later in the process, when the applicant submits its proof that the mark is actually in use.
Examination by the PTO.
Once a new application has been received by the PTO , it is then placed in queue to be assigned to a trademark examining attorney and begin the examination process, which typically takes six to eight months. As a result of the examination process, the examining attorney will either refuse registration or approve the mark for publication. A refusal of registration takes the form of an “Office Action,” in which the examining attorney sets forth the reasons for the rejection and gives the applicant six months to cure the defects or otherwise respond. Often, if the problems with the application are minor technicalities, they can be resolved over the telephone. An Office Action raising more serious substantive issues which must be addressed with a written response can add six to 12 months to the examination process. Such substantive issues may involve either a potential conflict with a registered mark or with the mark in an earlier-filed application, or a determination by the examining attorney that the mark is too “descriptive” to be entitled to trademark protection. An Office Action raising either technical or substantive matters is issued in the vast majority of cases.
Approval, Publication and Registration.
Once the mark is approved for publication, it will appear in the PTO’s Official Gazette about one to three months later, after which members of the public have 30 days to file notice with the PTO if they object to the mark being registered. If such a Notice of Opposition is filed, an opposition proceeding will be conducted before the Trademark Trial & Appeal Board (the “TTAB”), a panel of three administrative law judges within the PTO who adjudicate disputes over the registrability of trademarks. Procedurally, opposition proceedings are not unlike civil litigation in court, and they can be just as time-consuming and costly. On the other hand, if no one opposes the registration of the mark, either a Certificate of Registration or (in the case of an ITU application) a Notice of Allowance will issue, which can take another six to 12 weeks. From beginning to end, the entire application process can take 18 months to two years to get to this point (the current average is believed to be around 19 months). In the ITU context, after issuance of a Notice of Allowance the applicant has six months to file a sworn statement (including one or more specimens) establishing that the mark is actually in use; up to five extensions of this deadline are available for an additional fee, provided the applicant can show that it is making a bona fide effort to put the mark into use. This Statement of Use goes through a brief examination period, and if and when it is approved a Certificate of Registration will issue.
Final Refusal.
If, on the other hand, the examining attorney does not accept the applicant’s arguments in a response to an Office Action, the PTO will issue a final refusal. At that point, the applicant may file a request for reconsideration with the examining attorney and/or may appeal the matter to the TTAB. The applicant may also abandon the application at any point during the review process. This does not mean that the applicant cannot use the mark – it’s just not entitled to the benefits of federal registration. If, however, the problem with the application arises out of a conflict with a mark having priority over the applicant’s, it would often be inadvisable to use the mark because of the possibility of a claim of infringement.