The United States Patent and Trademark Office (USPTO) examines every application for registration of a trademark for compliance with federal law and the Trademark Rules of Practice.
If you are an applicant, registrant, or party to Trademark Trial and Appeal Board proceedings who is domiciled in the United States or its territories, you are not required to have a U.S.-licensed attorney represent you at the USPTO, but working with an experienced attorney to guide you through the application process is highly recommended.
Hoofe IP Law provides quality legal advice and guidance in all areas of trademark law, including:
Responding to trademark office action
Trademark infringement (cease and desist)
Trademark opposition and cancellation proceedings
Rules of Practice in Trademark Cases; the text of the Trademark Act of 1946, as amended, and related statutory sections: U.S. Trademark law rules of practice & federal statutes.
The USPTO mandatory electronic filing rule makes electronic filing mandatory for trademark submissions.
The U.S.-licensed attorney rule requires that foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings must appoint and be represented before the USPTO by a U.S.-licensed attorney.
Applying to register your trademark with the USPTO begins a legal process. During this process, you must meet legal requirements and deadlines, and you must pay all required fees. Not all applied-for trademarks register.
If your trademark registers, you must meet additional legal requirements, pay required fees, and meet statutory deadlines to maintain your registration and keep it active.
Your timeline depends on the filing basis you select in your application. The Trademark Act (“the Act”) sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved for publication for opposition or registration on the Supplemental Register. The five bases are: (i) use of a mark in commerce under §1(a) of the Act; (ii) bona fide intention to use a mark in commerce under §1(b) of the Act; (iii) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (iv) registration of a mark in the applicant’s country of origin under §44(e) of the Act; and (v) extension of protection of an international registration to the United States, under §66(a) of the Act and the Madrid Protocol.
The Trademark Manual of Examining Procedure (TMEP) provides trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the current law, practices, and procedures relative to prosecution of applications to register marks in the USPTO.
The Trademark Trial and Appeal Board Manual of Procedure (TBMP) provides stakeholders with basic information generally useful for litigating trial cases before the Trademark Trial and Appeal Board (TTAB). The manual describes current practice and procedure under the applicable authority, including the Trademark Act, the Trademark Rules of Practice, the Federal Rules (where applicable), and precedential case law.
The Trademark ID Manual lists identifications of goods and services and their respective classifications that the USPTO examining attorneys will accept without further inquiry if the specimens of record support the identification and classification. The listing is not exhaustive, but is intended to serve as a guide to both examining attorneys in acting on applications and to filers in preparing applications.
Every Tuesday, the USPTO issues the Trademark Official Gazette, a publication that contains a depiction of the mark, the identification of goods and/or services, and owner information for: (1) marks published for opposition on the Principal Register; (2) marks registered on the Principal Register under 15 U.S.C. §1051(d); (3) marks registered on the Supplemental Register on the date of the particular issue in which the marks appear; and (4) updated registration certificates.
Between updates to the Trademark Manual of Examining Procedure (TMEP), the USPTO occasionally provides guidance about a particular issue through the issuance of a Trademark Examination Guides. Typically, as to that issue, the Examination Guide supersedes the current edition of the TMEP to the extent any inconsistency exists and the guidance contained therein is usually incorporated into the next edition of the TMEP.
The USPTO assigns all marks containing design figurative elements a 6-digit numerical code(s) for searching purposes. The Design Search Code Manual indexes the categories, divisions, and sections that make up these codes.
Deciding what to search for and interpreting the results of your search can be complicated. There are many factors to consider in determining likelihood of confusion.
Before you apply for a trademark registration, you should search the USPTO’s trademark database to see if any trademark has already been registered, or applied for, that is:
Similar to your trademark;
Used on related products or for related services; and
A trademark that meets all three criteria will prevent your trademark from being registered because it creates a likelihood of confusion.