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Trademark Basic Facts
LEGAL AND PROCEDURAL REVIEW OF APPLICATION
After the USPTO determines that you have
met the minimum filing requirements, the application
is forwarded to an examining attorney. This may
take a number of months. The examining attorney
reviews the application to determine whether it
complies with all applicable rules and statutes
and includes all required fees. Federal registration
of trademarks is governed by the Trademark Act of
1946, 15 U.S.C. §1051 et seq., and the Trademark
Rules of Practice, 37 C.F.R. Part 2.
A complete examination includes a search for conflicting
marks, and an examination of the written application,
the drawing, and any specimen.
If the examining attorney decides that a mark should
not be registered, the examining attorney will issue
a letter (Office action) explaining any substantive
reasons for refusal, and any technical or procedural
deficiencies in the application. If only minor corrections
are required, the examining attorney may contact
the applicant by telephone or e-mail (if the applicant
has authorized communication by e-mail). If the
examining attorney sends an Office action, the applicant’s
response to the Office action must be received in
the Office within six months of the mailing date
of the Office action, or the application will be
declared abandoned.
If the applicant's response does not overcome all
objections, the examining attorney will issue a
final refusal. To attempt to overcome a final refusal,
the applicant may, for an additional fee, appeal
to the Trademark Trial and Appeal Board, an administrative
tribunal within the USPTO.
Does the examining attorney search for
conflicting marks?
Yes. After an application is filed, the
assigned examining attorney will search the USPTO
records to determine if a conflict, i.e., a likelihood
of confusion, exists between the mark in the application
and another mark that is registered or pending in
the USPTO. The USPTO will not provide any preliminary
search for conflicting marks before an applicant
files an application. The principal factors considered
by the examining attorney in determining whether
there would be a likelihood of confusion are:
the similarity of the marks; and
the commercial relationship between the goods and/or
services listed in the application.
To find a conflict, the marks do not have to be
identical, and the goods and/or services do not
have to be the same. It may be enough that the marks
are similar and the goods and/or services related.
If a conflict exists between your mark and a registered
mark, the examining attorney will refuse registration
on the ground of likelihood of confusion. If a conflict
exists between your mark and a mark in a pending
application that was filed before your application,
the examining attorney will notify you of the potential
conflict. If the earlier-filed application registers,
the Examining Attorney will refuse registration
of your mark on the ground of likelihood of confusion.
Can I search for conflicting marks before
filing?
Yes. You should always conduct a comprehensive
trademark search before adopting, using or registering
any trademark..
Are there other reasons the examining attorney
might refuse my mark?
Yes. In addition to likelihood of confusion
(discussed above), an examining attorney will refuse
registration if the mark is:
primarily merely descriptive or deceptively misdescriptive
of the goods/services;
primarily geographically descriptive or primarily
geographically deceptively; misdescriptive of the
goods/services;
primarily merely a surname; or
ornamental.
This is not a complete list of all possible grounds
of refusal.
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