
What is the USPTO, and what does it have to do with your quest to attain a Trademark?
Small and medium-sized business owners have likely heard that registering their brand as a US trademark is an important step in the process and that a trademark can be the most valuable asset of a company. However, they likely do not know the ins and outs of the process to attain a trademark and may feel intimidated by a process that seems, at first blush, very technical and daunting. It does not help that unfamiliar terminology and acronyms are used by resources and attorneys alike, which confuses people. In addition to legal jargon pertaining to trademarks, one of the most common sources of confusion is when business owners hear about the USPTO. That acronym stands for the United States Patent and Trademark Office, a governmental entity in charge of both Patents and Trademarks. But for those seeking trademarks, you do not need to be scared off nor concerned about the patent side of things. The patent side of the USPTO and the trademark side function separately and thus a trademark applicant need only be concerned with the USPTO's Trademark Office. The USPTO oversees the examination and registration and thus can be a vital ally for entrepreneurs, startups, and small business owners looking to protect their intellectual property.
What is the USPTO?
The USPTO is technically a federal agency that falls under the US Department of Commerce. While it is the governing agency that handles both patents and trademarks, a trademark applicant need only be concerned with the Trademark Office of the USPTO. The USPTO's Trademark Office is the governmental entity that handles trademark examinations and registrations. Its headquarters are located in Alexandria, Virginia. The USPTO also advises the President and others in the government on matters pertaining to intellectual property, but that is a function that trademark applicants will not be concerned with, for the most part. The USPTO is a rarity among federal entities, in that it's operating budget is covered solely by fees generated by trademark and patent filings. So - when you ask why the filing or other processing fees for the trademark process are so expensive - it is to fund the very important systems and personnel. To imagine the scope of the work - there have been over 7 million trademark registrations issued. The number of trademark applications is thus a much larger, staggering number - and the USPTO has to have personnel and systems to deal with all of it. The trademark applicant will most be concerned with the Examining Attorney - because most of your interactions with the USPTO will be with such an Examining Attorney.
What is a USPTO Examining Attorney?
The USPTO has approximately 750 examining attorneys on staff who are the main personnel dealing with new trademark applications. Each of them is a licensed attorney. Their role is to process and examine applications to determine if the trademark being sought to be registered is eligible for registration under the Lantham Act (ie. the "Trademark" Legislation) and whether there are any other reasons to refuse registration, such as conflict with an existing trademark. The examining attorney will also represent the USPTO in any appeals before the Trademark Trial and Appeal Board ("TTAB"). The role of an examiner is to either approve an application for the next phase, or issue an "Office Action" (also known as a preliminary refusal letter) to identify any problems or deficiencies discovered. To understand the importance of the examiner attorney, let's take a look at the trademark application process.
The Basics of the Trademark Application Process.
The trademark application process can be summarized as follows:
- (Recommended, but not required) Trademark Search (and "clearance"):
It is always a good idea to check if anyone else has already registered any similar trademark for a similar or identical good/service. It can also be helpful to your filing strategy to know if anyone else has tried to do so and failed. In essence, if they were refused (due to a conflict or other deficiency), this information may be critical to your understanding of the risks and chances for your application, as well as improvements or strategies to employ to avoid a similar fate. A trademark attorney is a valuable resource for this stage, due to being familiar not only with the examination process, but also the laws as they pertain to the differences between registered and unregistered marks or federal and state trademarks, for instance. The process of an attorney analyzing the results of a search to give a legal opinion on risks or strategies uncovered - is called a "Clearance Opinion." Trademark attorneys very often do such searches on a flat fee basis. There are different types of searches. A Knock-Out search will only be concerned with other USPTO registrations that are exact matches and which thus have direct (negative) bearing on the proposed application. Another type of search is a "Comprehensive Search" which will search for similar USPTO registrations of trademarks in similar goods and services, as well as all the various State trademark registries, and unregistered uses by companies that may amount to "common law" trademark rights. Trademark attorneys typically use outside vendors that specialize in obtaining and reporting the raw data from such searches, as this cuts down the legal time required to perform a similar search.
- Prepare and file the Application:
Whether you are making your own application (or using a "do it yourself" service) or represented by a trademark attorney, the application is filed with the USPTO. The trend has been to move every filing to an online/electronic rather than paper/mail process. The current online system, known as "TEAS" is being phased out and will be retired at the beginning of next year. The new "Trademark Center" is functional (currently in beta) and will be replacing the TEAS system. Basically there are a series of forms that need to be filed, depending on the basis of the trademark (if it is a domestic filing or based on a foreign registration under the Madrid System, etc.). Though you can create your own account and decipher and figure out the forms, it makes sense to have a trademark attorney do all the hard work for you, and file the application using their attorney login in the system. Once filed, the USPTO will give email updates on the pending application. Again - if you have a trademark attorney representing you, that attorney will get all the updates and emails and will know how to explain and/or undertake next steps with you.
- Examination Phase:
After you file your application, it will sit in the queue for several months, waiting to be assigned to an examiner attorney. Once an application is assigned to an examiner attorney, they will undertake the analysis previously mentioned to determine the eligibility and/or appropriateness of the mark sought for trademark registration. Again, they either approve the application for the next phase (Publication) or they issue a preliminary refusal letter (Office Action).
- Office Action:
If an office action is issued, you get 3 months to file a response to try and address the deficiencies raised, or convince the examiner attorney that the refusal is not justified. Again, after that the examiner attorney can either approve the application for Publication, or issue a Final Refusal Letter (Final Office Action). If that Final Office Action is appealed to the TTAB, the examiner attorney will file all briefs on behalf of the USPTO in that proceeding.
- Publication in the Official Gazette:
During this phase, the USPTO will publish your desired mark and application details for a period of 30 days to allow any interested parties to file a formal 3rd-party opposition proceeding. If no such opposition is filed, then your application goes on to the next phases (Notice of Allowance for "Intent-to-Use" or Registration).
- Notice of Allowance/Registration:
If you have filed on an "Intent-to-use" basis, then a Notice of Allowance will be issued after Publication, which gives you 6 months to file a Statement of Use to prove that you have begun using your mark in commerce. Once you satisfy that requirement, your mark will mature to registration and become a Federally protected trademark. Similarly, if your mark was already in use and successfully passes Publication with no opposition filed, then it is just a waiting game for a registration certificate to be issued.
Currently, the above process is taking 14+ months from the date of the application to a final dispositive decision. One of the most frustrating parts of the process (at every phase) is the waiting period that is involved, when in essence you are waiting for the USPTO to take one action or another. Delays have been introduced into the process by the huge influx of applications the past few years. Again, given that the USPTO operates totally on the fees it collects, there is very little it can do to try and speed things up, except hire new people, and eventually, raise the fees. Newsflash - the filing fees will be increasing very soon!
What else does the USPTO handle?
Beyond the application/registration process - the USPTO also handles several other aspects pertinent to a trademark owner's activities.
- Maintenance/Renewal:
In order to keep the trademark registration in good standing, maintenance and renewal filings will need to be undertaken at certain intervals (5/6th year, 9/10th year and ever 10 years thereafter). Again, since failure to file the necessary documentation at any interval will lead to the abandonment of your trademark registration, it is a good idea to make sure that you have the assistance of a trademark attorney to not only keep track of these deadlines, but also to prepare and file the forms on your behalf (and deal with the USPTO in relation to any questions and/or deficiencies)
- Assignments/Transfers:
A trademark registration, just like any other tangible asset, can be sold or transferred. A transfer agreement (called an assignment) should be executed by the parties, and then recorded at the USPTO. Again, it is a good idea to utilize a trademark attorney for this process, to make it as error-free and painless as possible.
Conclusion
The USPTO plays a critical role in helping entrepreneurs and small businesses protect their brand identity through trademark registration. Understanding this process can give you the edge you need to secure your intellectual property and focus on building a successful business.
Rather than being viewed as an adversary, the USPTO should be viewed as a cooperative party in the process. Knowing the USPTO process and understanding the manner in which it functions can assist you in having a successful process. A trademark attorney will have that special knowledge of the law, procedures and requirements of the USPTO to make the process as smooth as possible.
Ready to take the next step in protecting your brand? Consult with a trademark lawyer to guide you through the USPTO process and ensure your brand's identity is safeguarded. Our office provides a variety of trademark services (including on the basis of reasonable flat fees). Your initial consultation on a trademark matter is always free of charge. So reach out to us today!
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