Basic Facts About Registering A Trademark, Part 2

Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It's not necessary to have a registration or even a pending application to use these designations. The claim may or may not be valid. The registration symbol may be used only when the mark is registered in the PTO. It's improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.

General Trademark or Patent Information (703) 308-HELP

Automated (Recorded) General Trademark or Patent Information (703) 557-INFO

Automated Line for Status Information on Trademark Applications (703) 305-9723

Additional Status Information (703) 308-9400

Assignment & Certification Branch (Assignments, Changes of Name, and Certified Copies of Applications and Registrations)

Trademark Assistance Center (703) 308-9000

Information Regarding Renewals [Sec. 9] Affidavits of Use [Sec. 8],

Incontestability [Sec. 15], or Correcting a Mistake on Registration (703) 308-9500

Trademark Trial and Appeal Board (703) 308-9300

Assistant Commissioner for Trademarks (703) 308-8900

The PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine whether it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.

About four months after filing, an examining attorney at the PTO reviews the application. If it's determined that the mark can't be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. This ground is discussed in Part 1. Here are other marks that may be refused:

• Marks that are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services
• Marks consisting of geographic terms or surnames

Marks may be refused for other reasons as well.

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 PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. If there are two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party that believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to 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.

If the application was based on the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published if no opposition was filed.

If, instead, the mark was published based on the applicant's statement of having a bona fide intention to use it in commerce, the PTO will issue a Notice Of Allowance about 12 weeks after the date the mark was published-again, provided that no opposition was filed. The applicant then has six months to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the statement of use is filed and approved, the PTO will then issue the registration certificate.

If the application was based on the actual use of the mark in commerce before approval for publication, the PTO will publish the application with the earliest effective filing date first. Any party that believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to 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.