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Applying for a Trademark: Alpha to Omega
Learn the 8 steps for obtaining a federal trademark registration.
Step 1: Search
It’s a bad idea to invest resources into a trademark that may later need to be scrapped. Before you order those business cards, purchase a url, or order those goods, make sure you are free to use the trademark by obtaining a trademark search. A trademark search should uncover potential conflicts that will curtain your ability to use a trademark. It’s important to use a trademark attorney to conduct the search because trademark law is not widely understood. Did you know that trademark infringement does not require intent, copying, or identical use? Likelihood of confusion can be established between two trademarks that simply rhyme, or for colors that are similar. It’s important to seek out an expert opinion. In fact, searching the Trademark Electronic Search System, or TESS, provides little information because trademark rights are established by use, not registration. Know that your mark is registerable before you use it!
Step 2: Use
Trademark rights are established based on use, not registration. So, you should use the trademark prior to applying for a trademark. Using the trademark means providing a product or service to another across state lines (generally speaking). If you haven’t yet used the trademark, then you may still begin the process of applying for a federal trademark using an intent-to-use trademark application. These types of applications are examined as if the trademark has been used, but will not result in an issued trademark until an affidavit of use is filed (and an appropriate fee is paid).
Step 3: Apply
Applying for a trademark is the next step in the process. Most trademark applications are filed online using the United States Patent and Trademark Office’s online filing system, called the Trademark Electronic Application System, or TEAS. TEAS allows trademark applications to be filed pretty easily by uploading a specimen, image of the trademark, and inputting all other required information. Most applicants pay $225 per class, per mark. The ease of use of TEAS has resulted in more than 480,000 online trademark applications being filed in the USPTO just this year alone! In my experience, most of the applications are not filed correctly. The online interface fools users into thinking that the trademark application process is easy. It is not. An attorney is needed to choose the proper specimen, identify the proper classification of goods or services, and to determine the strength of the mark. Filing a descriptive or generic mark is often a waste of time and money. Submitting a specimen that is not reflective of the goods will also increase costs (e.g. submitting a picture of a t-shirt with a logo on the front, will get your specimen rejected). Using a trademark attorney almost always saves the trademark owner money.
Step 4: Prosecution
It’s surprising how many of my clients hire me thinking that trademarks are simply registered without an examination process. Many believe that if no one has registered their trademark, then they’ll be awarded rights to it. This couldn’t be farther from the truth. Only about 30% of applications are allowed without a refusal. refusals are both substantive and technical. They can be made to the specimen, the alleged use, the goods or services, or to the mark itself. A trademark must be used as a trademark in commerce. A trademark must also not be confusingly similar to an average consumer. These are legal determinations that require the skill of a trademark attorney. Many unrepresented applicants give up when faced with a likelihood of confusion refusal that most trademark attorneys could easily overcome. During the prosecution stage, a USPTO trademark attorney will issue communications called Office Actions, which state the refusals to the application. The applicant is required to respond to each and every allegation. On average about two office actions before dismissal (allowance or final refusal) of the application. Prosecution takes on average about 9-12 months and begins about 2-3 months after filing.
Step 5: Opposition
If a trademark is allowed, it is then published for opposition. Allowed applications are published in the Official Gazette, which is a USPTO publication that contains trademarks for public review. The opposition period lasts 30 days from the date of publication (which usually begins weeks after allowance). During those 30 days, anyone who believes that the registration of the trademark is harmful to them or improper may seek withdrawal of the allowance by filing a notice of opposition. The notice is akin to a civil litigation complaint and sets forth the opposers reasons for believing that a trademark registration should be denied. The opposition process is long, taking on average about 18 months to complete, and includes motions, like summary judgment motions, discovery and the submission of a trial brief. Depositions are not unusual in opposition proceedings.
Step 6: Issuance/Statement of Use
If an opposition is not filed or is unsuccessful, the mark will issue for applications based on use. For applications filed based on an intent to use the trademark, the applicant has up to six months to file a statement of use, demonstrating the use of the trademark. If the applicant fails to file the statement within six months, or request a six-month extension, the application will be abandoned and no trademark registration will issue.
Step 7: Maintenance
After a trademark application issues, the trademark owner must file maintenance documents to avoid abandonment of the trademark. If the registration is abandoned, the registrant must start the entire process again.
Step 8: Monitoring
Trademark owners are required to police their trademarks, which means that they can’s sit idly and allow their trademark rights to be infringed. Professional monitoring is relatively inexpensive (we charge $39/month) and effective at discovering unauthorized uses. All trademark owners should have some sort of active protocol for dealing with potential infringers identified, which includes informing and warning of infringement, as well as judicial enforcement.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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THE TRADEMARK OPPOSITION PROCESS
This article walks a reader through the trademark opposition process, including filing a notice for opposition, defending the opposition, the trademark opposition timeline, the trademark opposition process, what to do when your trademark application is opposed, and the grounds for a trademark application opposition.
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What is a trademark opposition? What to do if your trademark is opposed?
Once the United States Patent and Trademark Office approves a federal trademark application, the trademark is published for opposition. Publication is accomplished by listing the trademark in the Official Gazette, a weekly USPTO publication. The trademark appears in the Official Gazette for 30 days, but this "opposition window" may be extended if a party files a request to extend the time.
Notice of Opposition
If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window. A Notice of Opposition is nearly identical to a federal court complaint. The filer, or "opposer," must set forth a fact supporting each element of its claims. The opposer must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.
Grounds for Trademark Opposition
Typical grounds for opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds for opposition include, abandonment of the trademark through non-use, fraudulent or illegal registration, applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent. Many of the same grounds can also be asserted in a trademark cancelation proceeding.
Answer - Defending A Trademark When Notice of Opposition is Filed
Once the Notice of Opposition is filed, the owner of the trademark being opposed has 40 days to file an Answer. The Answer must either admit or deny every allegation in the Notice of Opposition. The Answer must also include any affirmative defenses or counterclaims the applicant wishes to assert. An affirmative defense acknowledges an apparent right held by opposer but relies on some new matter by which opposer's rights are defeated. As such, an applicant must be careful about asserting such defenses. A counterclaim is a claim that an applicant has against the opposer that arises out of the same occurrence or transaction that is the subject of the opposition. A counterclaim can include a request to cancel or restrict one or more of the registration on which opposer relies. If a counterclaim is asserted, the applicant must remember to pay the fee associated with the request for cancelation.
What's Next
The opposer has the opportunity to reply to the Answer, and the opposition moves on to discovery and a lengthy opposition schedule, which does not typically includes several motions that are filed by both parties.
Here's a sample opposition schedule:
Time to Answer 11/28/2018
Deadline for Discovery Conference 12/27/2018
Discovery Opens 12/27/2018
Initial Disclosures Due 1/27/2019
Expert Disclosures Due 5/26/2020
Discovery Closes 6/26/2020
Plaintiff's Pretrial Disclosures Due 7/10/2020
Plaintiff's 30-day Trial Period Ends 8/24/2020
Defendant's Pretrial Disclosures Due 9/8/2020
Defendant's 30-day Trial Period Ends 10/23/2020
Plaintiff's Rebuttal Disclosures Due 11/7/2020
Plaintiff's 15-day Rebuttal Period Ends 12/7/2020
Plaintiff's Opening Brief Due 2/5/2021
Defendant's Brief Due 3/6/2021
Plaintiff's Reply Brief Due 3/21/2021
Request for Oral Hearing (option) Due 3/31/2021
Oppositions can be complicated, expensive and lengthy.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
I’m on YouTube!
Ahaji Amos, PLLC
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TRADEMARK OPPOSITIONS AND CANCELATIONS
This article details the 8 steps involved in trademark prosecution, including those that occur after the trademark has been allowed, but before the trademark has been registered by the United States Patent and Trademark Office.
There are several steps to the trademark process that go beyond a Notice of Allowance from the US Patent and Trademark Office.
Here are the 8 trademark prosecution steps:
1. Trademark search
2. Identify appropriate goods or services
3. File Trademark Application
4. Prosecution of Trademark (Negotiations between the USPTO and application regarding the registerability of the trademark)
5. Allowance granted by USPTO Trademark Attorney
6. 30-Day opposition period
7. Submission of Statement of Use to USPTO
8. Registration of Trademark
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
