Brand counsel use many tools to help businesses protect their brands. The most common tool is registering a trademark with the US Patent and Trademark Office. This process seems simple but there is much that goes into the strategy behind filing the application and moving it towards registration. I thought it might be helpful to share information to demystify the process a little, and also possibly demonstrate how experienced brand counsel provide value during this process.
Before I begin launch into trademark registration, I wanted to share a few thoughts on other portions of brand protection. Perhaps the most important step in the process of brand protection is clearance. Without this step, it is impossible for the business owner to understand how much risk is associated with adopting a certain brand, and what paths are best for protecting the brand. Once this process is completed, brand counsel can explain the risk, the best paths to protecting your brand and the different avenues you might pursue for brand protection.
The next step after clearance is registering rights in your brand(s). Some of these avenues may include trademark registration at the state, federal or any number of international jurisdictions; copyright registration; design patent registration; etc. One area that is getting more attention recently is NIL- name, image and likeness. Experienced counsel can ensure that NIL is included in the overall protection plan.
Once you have some rights in place, you should police your brand. There are many tools that can be used for this, and this should be coordinated by brand counsel.
Finally, if you find a potential infringer, you need to determine how/if you should enforce your rights.
Steps in obtaining a US Trademark Registration
There are many assumptions in this article. Most notably, we assume that the business owner is aware of how much risk is involved in using and registering their brand and that they have decided the best vehicle for protecting the brand is filing a US trademark application. Further, this article pertains specifically to the US trademark registration process. While there are many overlaps in similar state and foreign processes, the US process is quite unique.
The registration process is comprised of four general steps, namely, filing the trademark application, review by the government, review by third parties and proving that the brand is in use in commerce. These steps have multiple sub steps, each of which could fill a book on its own. I won’t pretend to provide all pertinent information in this article; simply an overview of the entire process.
Filing the trademark application of course consists of gathering the information necessary to complete the application, but there is more strategy implemented at this stage than at any other step. Basic decisions such as choosing a filing basis drives the timing of the filing, the duration of the process and the costs of the process. Determining the combination of the brand and goods/ services to include in each application can be the difference in collisions with other brands one on hand and breadth of protection on the other hand. Finally, other strategies such as declaring portions of the brand to be descriptive or translatable can be included at this time.
Review by the government is a very broad topic. The USPTO must consider many rules when reviewing an application and therefore there are many types of refusals that could be issued. Further, the facts that the examiner is being graded by the number of refusals issued and this same examiner is an unbiased party present unique opportunities for the applicant.
Publication opens the window of time for third parties to review your application and to oppose it if they feel they would be harmed if the USPTO issued a registration. In many ways this is a repeat of the government’s review in that the same rules apply. However, the applicant will now be facing a very biased party—possibly a competitor or similarly adverse business. Fortunately, very few applications are opposed, but those that are frequently spend months or years in this stage.
Proving use of the brand can happen at many stages of the registration process. This step is uncommon in the rest of the world, thus many foreign applicants have issues with this process. The USPTO rules are not necessarily intuitive, so many US applicants also have issues with this process.
Filing Basis for a Trademark Application
Not everyone can file an application to register a trademark. The application requires that each applicant declare at least one reason that it is allowed to file a trademark application. This is referred to as the application filing basis.
There are four basic filing bases: intent to use the trademark in commerce; current use of a trademark in commerce; filings made directly to the USPTO, but based on a foreign application or registration; and applications filed indirectly to the USPTO via WIPO and based on a foreign application or registration. Each one of these methods involve a distinct decision tree that can lead to registration. Further, each one has various requirements that must be met along the way and even various privileges.
Intent to use a trademark is exactly as it sounds. An applicant is allowed to use this basis if it has a bona fide intent to begin using its brand. The USPTO will review this application like every other application, and this application can even be published for third party opposition. However, the USPTO will not issue a registration until the applicant has shown that this brand is in use. This can be done prior to publication, in which case the process is not slowed down. Many applicants file this proof of use after publication, which could delay the registration process by up to three years. One reason this method is popular is that the brand is treated as though it began use as of the application date. One pain point about this basis is that it costs more money as the statement of use has a separate filing fee, as do the extensions which may be necessary.
An applicant can also file an application based on its current use of a trademark. This method is likely the most straightforward as the application is filed directly with the USPTO and contains everything required to achieve registration. This simplicity makes it the fastest method and inexpensive.
The other methods require that the applicant holds a valid registration or a pending application for the exact same brand in connection with the same or a more narrow list of goods and services in a foreign country. This method is popular amongst applicants wishing to gain trademark rights in multiple jurisdictions, and is generally best for foreign entities expanding their rights in to the US. One perq is that there are provisions that can allow the US application to be treated as though it were filed on the same day as the foreign application. A downside of the direct filing method is that the applicant must show that the foreign registration was issued before the USPTO will even publish the application for third party opposition. A downside of the indirect filing method is that WIPO has its own review process which the applicant must first complete before the application is sent to the USPTO.
What Brands and Identifications to include in a Trademark Application
The most common thing people understand about trademark law is that the test for infringement is likelihood of confusion. While this is a multi-factor test, the basics in determining whether or not one brand is likely to be confused with another is whether the brands are similar and their goods and/or services are related. While this is more art than science, there is much opportunity to determine how the USPTO will view this analysis based upon what you put in the application.
This becomes important when you are aware of specific brands that may cause some concern. For example, maybe you are opening a restaurant that bears your last name (e.g., Swanson) and it is similar to a name used on food sold in the grocery stores. The goal would be to prepare your application such that it presents your brand in a way that the USPTO (and ultimately the other party) does not think there is a chance that the public would be confused between the brands.
First, in terms of the brands themselves, you can determine whether or not additional words or other elements should be included/excluded from the brand identified in the application. Maybe adding a distinctive term, design, stylization or color will help differentiate your client’s brand from the existing brand.
Next, you can possibly describe the goods and services to reduce the risk that they are related. Maybe you serve seafood in your restaurant and the existing brand is know for apples. In that case, I would decide to make sure that the application is narrowed to seafood restaurants only.
This is very much a judgment call and can really only be made by someone who has seen hundreds or thousands of situations in which similar items were compared. Also, this is the stage in which you make sure that your application is in the best position to be defended if the USPTO does claim that there is a likelihood of confusion.
Other Considerations in Filing a Trademark Application
Filing a trademark application can be compared to making a first offer in a negotiation. First, you need to make sure your basic elements are correct. Second, you need to make other elements look the way you want them to look to get the USPTO to think the way you want them to think. Many of these decisions are very nuanced and require knowledge not only of trademark law, but also an understanding as to how the USPTO and third parties think.
One basic thing includes making sure you identify the correct applicant. There are many cases in which a registration has been cancelled based on a simple mistake like this. Other basic things include making sure the right brand is identified, and that you’ve included correct information about the filing basis.
Other elements are not crucial to the application being valid, but may be critical as to whether the registration is ultimately issued or how broad its registered rights may be. Common examples are whether or not you choose to disclaim exclusive rights in a word in your brand or how you choose to translate a foreign word in your brand. Another big consideration is what filing basis/bases you should use. Often an applicant qualifies for more than one, and choosing which one(s) to use may be the difference between a registration or an abandoned application.
You can’t be effective in this area unless you understand trademark law, the registration process and how the USPTO and third parties think.
Common Formal Objections Raised by the USPTO in the Review of a Trademark Application
Once you file the application, the USPTO will review it to see if it is fit for publication. Don’t expect a quick turnaround here. This review has been as quick as 3-4 months, but is currently taking about 6 months or longer. If the USPTO determines that the application is acceptable, the applicant will receive notice that it will be published for third party review. On the other hand, the USPTO may determine that there are some issues which prevent publication, in which case these will be explained to the applicant in an office action (aka Initial Refusal) and the applicant will be given 6 months to respond to these issues.
The types of issues raised are generally labeled as formal or informal. The formal issues are more severe, and accordingly more difficult (and expensive) to overcome. The two most common formal objections are likelihood of confusion and descriptiveness.
Likelihood of confusion can be very difficult to overcome. In general you need to show that, based on information present in the records, it is not likely that the public will be confused between your brand and other brand(s) on file with the USPTO. There is a lot of case law in this area and several plans of attack. Competent brand counsel can sort through this and determine the best path forward.
Descriptiveness is potentially more subjective than likelihood of confusion. The line between a descriptive and a suggestive trademark is very important and also the most arbitrary in all of trademark law. Again, there is a lot of case law in this area and competent brand counsel can counsel you through the balancing of having the strongest brand possible and gaining a registration.
Another category relates to the specimens of use provided in an application based on use in commerce. I will discuss this topic in more detail in a later section dedicated to proving use of a brand.
I’ve alluded to competent brand counsel on several occasions. Another concept is good brand counsel. Good brand counsel will provide you with a cost estimate to prepare these arguments and the likelihood of success. Tip of the day: try to find competent brand counsel who keeps your bottom line in mind.
Common Informal Objections Raised by the USPTO in the Review of a Trademark Application
Not all issues raised by the USPTO are severe, but they all must be addressed. Brand counsel typically refers to the less severe issues raised by the USPTO as informal issues.
As with the formal issues discussed in the last section, the USPTO will typically raise informal issues in a refusal letter and provide you with 6 months to respond. The good examining attorneys at the USPTO will often call the counsel of record if the only issues spotted are informal, as these matters can sometimes be resolved in a phone call. I’ve also seen allusion to the possibility that the USPTO may start requiring faster responses to office actions which raise only informal issues.
Informal issues can be as simple as correcting typographical errors or clarifying information about the applicant. They also can relate to the identification of goods and services, either requesting a more definitive or less ambiguous identification or suggesting that another class may be appropriate. Other topics include disclaiming exclusive rights to an element (i.e.,portion) or translating a word in the brand.
As with formal objections, it is important that you respond within the 6 month deadline. Failure to do so can lead to the abandonment of the entire application, or at least a portion of the application if the refusal relates only to a portion of the goods and services. There is a possibility to revive an application, but this must be done relatively quickly and the revival process adds time and money to the registration process.
While informal issues are less severe (i.e., easier to overcome), it is no less important to plan your response. For example, the USPTO’s request to disclaim a term may be easy to achieve, but what will that mean to the long-term protectability of your brand? It is important that you understand the repercussions of your response before you simply file it.
Common Grounds for Opposition Raised by Third Parties in the Review of a Trademark Application
Once you have completed the USPTO review phase, the next step is publication. While this term refers to the old practice the Trademark Official Gazette being printed and distributed to brand counsel who would then pore over the thousands of applications published each week (always on a Tuesday!), today publication is primarily an online phenomenon. (I wonder how many people still receive the TMOG?)
Third parties have 30 days after publication to oppose an application. They also have the option to file extensions of time to oppose, which are typically used to conduct further investigation, deliberation or settlement discussions. Assuming they decide to file an opposition, a mini trial begins in the Trademark Trial and Appeal Board.
Like any trial, there is a plaintiff (the opposer) and a defendant (the applicant). The plaintiff must file a Notice of Opposition which states the grounds for the opposition. By far the common grounds for opposition are likelihood of confusion. There are other grounds, including descriptiveness, dilution, fraud and abandonment. In each of these, the opposer must show that the applicant’s application fails to meet the legal requirements and that the opposer would be harmed by registration of that brand.
One drastic difference between overcoming a refusal from the USPTO and successfully defending an opposition is the seriousness of the other party. The USPTO is unbiased and is not as likely to go to great lengths to further its position. On the other hand, a party opposing your application will be personally harmed and is more likely to vigorously defend its position.
Oppositions are not the only way to challenge a third party’s registered rights. I have been involved in matters in which a third party negotiates with an applicant and convinces the applicant to either voluntarily abandon the application or assign it to the opposer. I have also been involved in federal cases in which the court decides the opposition should be abandoned. It takes a seasoned brand counsel to help you determine which method is right for your situation.
Proving Use of a Brand in the Review of a Trademark Application
The most common filing bases require that the applicant prove that it is currently using the brand. In layman’s terms, this means that you must provide the USPTO with a sample of your use, a brief description of this sample, the dates you first used your brand and a declaration that all items are currently in use.
The general rules about a sample of use (a “specimen”) is that it should show the brand and roughly describe or refer to the underlying goods or services. The PTO’s rules regarding appropriate samples of use (a “specimen”) vary according to whether you are providing a good or service. If you provide a service, the most common acceptable specimen is advertisement. If you provide a good, you should show packaging or some similar item that is likely to travel with the good in commerce.
The applicant must also need to describe the specimen submitted. There is a lot of strategy in this step as you want to make sure there is enough detail that the PTO can understand the context of the specimen, but not so much that they may second guess whether or not the specimen is something that would commonly be acceptable as a specimen. In short, you should not want the examiner to have to think too hard as they are more inclined to be too critical.
There are two dates of first use that need to be submitted—the date of first use anywhere and the date of first use in commerce. There is so much that can be written here, but in most cases these dates are identical.
Finally, you need to sign a declaration that the brand is being used in connection with all items in the application. It is possible to delete items and/or make the declaration apply to only certain items, but a registration will not issue until a declaration is submitted for all items in the application (as amended).
The number of specimens you are required to submit depends on the number of classes your application covers. The simple rule is that you need to submit at least one specimen per class of goods and services. If one class contains multiple items, a specimen for any one is sufficient provided you sign the declaration that the brand is in use for all items. There are some situations in which it seems unusual to submit only one specimen for an application, especially when the list of goods or services is exceptionally long. The USPTO has been known to challenge long listings of goods or services via an audit if anything seems suspicious, so one strategy is to submit multiple specimens to make this less likely. (Practice pointer: it is a good habit to collect and hold on to specimens for all items to be in a good position to address any future audit.)
The final point relates to the timing of the statement of use filing. If you have filed your application based on use in commerce, this step is accomplished as part of the initial application for registration. If you file your application based on intent to use your brand, you essentially have two separate time periods in which to file the statement of use.
The first time period begins the moment after you file the application, and ends once the USPTO concludes its review of the application. Filings made in this period are technically referred to as an Amendment to Allege Use. There are several advantages to filing in this time period. The primary benefit is that, if the USPTO does not accept your Amendment to Allege Use, you are allowed to withdraw it. Another benefit is that it reduces the time it takes to move forward to registration.
There is a black out period at the end of the first period which extends through the publication period and ends once the USPTO issues the Notice of Allowance. The Notice of Allowance essentially states that the applicant has met all of the requirements for registration except for proving that the brand is in use. The issuance of the Notice of Allowance begins the second time period, and this period lasts for six months, and the applicant can request up to five six-month extensions, for a total of three years. Filings made in this period are technically referred to as a Statement of Use. There are no real advantages to filing in this time period, other than it increases the overall time from filing date to registration. How is this an advantage? Remember that if you file based on intent to use, your effective priority date is the filing date. This could allow you to have a priority date that is easily four years prior to the date you actually began using the brand.
Anyone can file a trademark application. This statement is true because it only requires accessing the USPTO web site (United States Patent and Trademark Office (uspto.gov)), navigating to the correct form and answering some seemingly simple questions. However, only professionals trained in this area of law can fill out an application that is valuable; one that leads to a registration worth having and is not likely to lead the applicant towards problems.
If nothing else, I hope this article has demonstrated that there are many opportunities to use strategy when filing an application to register a trademark. I also hope you remember from the first section that filing an application is only a small part of effective brand protection. In fact, this is the beginning of the second step in the process. Anyone who starts by filing an application has robbed themselves of so many opportunities to make their brand protection more robust.
You should protect the brands you value. Accordingly, there is no need to act if your brands have no value to you. I suspect that your brand does have value, and I strongly encourage you to seek competent (and good) brand counsel, including Richard Rimer, the managing partner of Initiating Protection. We offer a free 30-minute consultation in which you can discuss your needs and one of our professionals can offer you a menu of options, complete with pricing.
Send that message. Your brand may depend on it. And remember, if you are not a brand owner, you are a brand squatter.