Copyright © 2015 International Trademark Association 655 Third Avenue, 10th Floor, New York, NY 10017-5646, USA

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U.S. Trademark RegistrationBy David M. Andersen∗

I. Introduction

Why should someone register a mark? While trademark rights in the United States generally arise from use, registering a mark substantially increases its value and enhances its owner’s ability to claim exclusive rights in the mark and to preclude others from using and registering the same or similar marks. A trademark owner’s ignorance of, or failure to comply with, the rules and procedures necessary to register a mark could undermine the owner’s ability to exploit and enforce his or her rights.

Generally, registering a mark is easier and more effective with the help of competent trademark practitioners, including trademark administrators or paralegals (“Administrators”) and trademark lawyers. Registering a mark requires the Administrator and the lawyer to exercise due diligence before, during, and after the filing of an application. The Administrator’s role is by and large tactical in nature, while the lawyer’s role is generally strategic. However, both play complementary and critical roles throughout the process.

This chapter describes the rules and procedures for trademark protection in the United States, as well as the practical steps and strategies that trademark lawyers and Administrators should use to register trademarks at the federal and state

∗ David M. Andersen is a Partner in the Bacal Law Group, P.C., Scottsdale, Arizona, assisting

clients in protecting and enforcing their trademark, copyright, and other intellectual property rights and in defending against IP-related claims. He and his law partner, Glenn S. Bacal, are co-authors of the Arizona section of INTA’s U.S. State Trademark and Unfair Competition Law (January 2014). Mr. Andersen has been selected for inclusion in The Best Lawyers in America® in 2015 and was on the SuperLawyers® list of Rising Stars in 2014.

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level. Because no single treatment can cover every aspect of this topic, practitioners are encouraged to consult the resources listed in Exhibit 1.

II. Overview of Federal Registration

The best way to protect one’s trademark rights in the United States is to obtain a federal registration. Recent U.S. Patent and Trademark Office (USPTO) statistics demonstrate that demand for federal registrations in the United States is enormous:

• As of the end of the USPTO’s fiscal year 2014, there were more than 2 million active federal trademark registrations in the United States.

• During fiscal year 2014, more than 336,000 federal trademark applications were filed and more than 206,000 registrations were issued (including more than 123,000 on the Principal Register).

• Many leading companies continue to procure registrations at a rapid rate—for example, Mattel, Inc. (426 registrations issued in 2014), Disney Enterprises, Inc. (186 registrations issued in 2014), and LG Electronics Inc. (156 registrations issued in 2014).

Source: USPTO’s Performance and Accountability Report, Fiscal Year 2014

Obtaining a registration requires at least a basic understanding of the different kinds of federal registrations and the possible bases for filing an application. Deciding what kind of registration to obtain and on what basis to file an application depends on a variety of factors, but most importantly on the mark owner’s end goals. Does the mark owner simply want any registration, or the broadest and most protective registration possible? Does the mark owner want coverage only in the United States, or elsewhere as well? Is the mark owner already using the mark or trying to register it elsewhere? How big a factor are cost and the need to obtain a registration sooner rather than later? Strategic planning, coordination, and record keeping early in the process can avoid significant problems and expense down the road.

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A. Kinds of Federal Registrations

The Lanham Act (U.S. Trademark Act) provides for two distinct trademark registers in the United States: the Principal Register and the Supplemental Register. Each of these serves a distinct purpose. A mark owner may not seek registration of the same mark on both the Principal Register and the Supplemental Register. See TMEP § 815.01. While a registration on the Principal Register generally is preferable because of the benefits conferred by such a registration, mark owners sometimes decide that a registration on the Supplemental Register is better than none at all.

1. Registration on the Principal Register

The Principal Register is the gold standard of federal registration. Whenever possible, a trademark practitioner should seek registration on the Principal Register over the Supplemental Register. Why? Because a registration on the Principal Register affords a mark owner the full bundle of rights available to owners of registered marks under the Lanham Act. These are discussed in the chart below.

Rights Afforded by a Federal Trademark Registration on the Principal Register

1. Constructive notice. Constructive notice to the world of the registration (see 15 U.S.C. § 1072).

2. Statutory presumptions. Prima facie evidence (or conclusive evidence if the registration becomes incontestable) of (a) the validity of the registered mark; (b) the registrant’s ownership of the registered mark; and (c) the registrant’s exclusive right to use the mark nationwide (unless the registration is a concurrent use registration) with the goods/services listed in the registration (see 15 U.S.C. § 1057(b); 15 U.S.C. § 1115(a)-(b)).

3. Constructive use. A “constructive use date” as of the date of filing of the application (see 15 U.S.C. § 1072).

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Rights Afforded by a Federal Trademark Registration on the Principal Register

4. Actual notice. The right to use the registered mark symbol ® (see 15 U.S.C. § 1111).

5. Easier to establish jurisdiction. The ability to bring an action concerning the mark in federal court by conferring federal question jurisdiction on claims relating to the registered mark without having to establish subject matter jurisdiction through other means such as diversity (see 15 U.S.C. § 1121(a)).

6. More legal claims. The ability to assert specific claims that require a registration, such as infringement of a registered mark (see 15 U.S.C. § 1114(1)) and counterfeiting (see 15 U.S.C. § 1116(d)); and a greater ability to establish other claims, such as dilution (see 15 U.S.C. § 1125(c)) and cybersquatting (see 15 U.S.C. § 1125(d)).

7. Additional remedies. In litigation involving counterfeit marks, mandatory treble damages for willful counterfeiting (see 15 U.S.C. § 1117(b)) or up to $2 million in statutory damages per counterfeit mark per type of good sold (see 15 U.S.C. § 1117(c)).

8. No state restrictions. The right to be free from any requirement by a state or local government to alter a registered mark (see 15 U.S.C. § 1121(b)).

9. Foreign registration. The use of the U.S. registration as a basis to obtain a registration in foreign countries—for example, under the Madrid Protocol (see 15 U.S.C. § 1141a).

10. Customs enforcement. The ability to record the U.S. registration with U.S. Customs and Border Protection (CBP) to prevent importation of counterfeit goods (see 19 C.F.R. § 133.3 et seq.).

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Rights Afforded by a Federal Trademark Registration on the Principal Register

11. Incontestability. If a registration on the Principal Register becomes incontestable (by the filing of an affidavit of incontestability between the fifth and sixth years after registration), the registration can be challenged only on certain grounds, such as abandonment, functionality, genericness, or fraud. An incontestable registration cannot be challenged on other grounds, such as priority and likelihood of confusion, lack of ownership, or lack of distinctiveness (see 15 U.S.C. § 1065; 15 U.S.C. § 1115(b)).

For a mark to be registered on the Principal Register, it (1) must function as a mark by identifying and distinguishing goods or services (see 15 U.S.C. § 1051); (2) must be used in interstate commerce before the registration issues (with certain exceptions, discussed below); and (3) must not fall within one of the statutory bars listed in Section 2 of the Lanham Act. For example, one cannot register a mark on the Principal Register if the mark is likely to cause confusion with another, already-registered mark (see 15 U.S.C. § 1052(d)) or if the mark is not inherently distinctive (i.e., generic or merely descriptive) and has not otherwise acquired distinctiveness (see 15 U.S.C. § 1052(e), (f)).

2. Registration on the Supplemental Register

If a registration on the Principal Register is not possible, a mark owner may still qualify for a registration on the Supplemental Register. The Supplemental Register is made up of a lesser set of marks that are capable of distinguishing an applicant’s goods or services but that do not qualify for registration on the Principal Register. Typically, a mark ends up on the Supplemental Register after the USPTO rejects its registration on the Principal Register, usually because the mark merely describes some feature of the goods/services. Following are examples of marks that might appear on the Supplemental Register:

Practice Tip

Sometimes it is possible to obtain a registration on the Principal Register by making a minor strategy adjustment, such as by registering a slightly different mark.

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• WORLD’S GREATEST FROZEN YOGURT

• JOHNSON ENGINEERING COMPANY

• ARIZONA CITRUS GROWERS ASSOCIATION

Owners of marks registered on the Supplemental Register are afforded no substantive trademark rights beyond those that already exist under the common law—that is, they do not enjoy most of the benefits afforded owners of marks registered on the Principal Register. Nonetheless, there are some overlapping benefits. For example, the registrant of a mark on the Supplemental Register has the right to use a notice of federal registration—the ® symbol—and to bring a suit in federal court for infringement of the mark. A Supplemental Registration also has a defensive purpose because it may appear in trademark searches conducted by third parties, and a USPTO examiner may cite a Supplemental Registration against subsequent applications for marks that are likely to cause confusion. Also, an application to register a mark on the Supplemental Register may not be challenged in an opposition; however, it still may be challenged in a cancellation proceeding brought after the registration issues.

Like a mark registered on the Principal Register, a mark registered on the Supplemental Register (1) must function as a mark and (2) must be used in commerce to obtain a registration. (Note: A mark owner cannot file an intent-to-use application for registration on the Supplemental Register; see 15 U.S.C. § 1091(a); 37 C.F.R. § 2.47.) But, unlike marks registered on the Principal Register, a mark that is (a) merely descriptive, (b) deceptively misdescriptive, (c) primarily geographically descriptive, (d) primarily geographically deceptively misdescriptive, or (e) primarily merely a surname may be registered on the Supplemental Register without a showing of acquired distinctiveness, as long as such mark is capable of distinguishing the applicant’s goods and services. See 15 U.S.C. § 1091(a); 15 U.S.C. § 1052(e)-(f).

Practice Tip

Even if a mark is registered on the Supplemental Register, one can still obtain a registration on the Principal Register through a new application after the mark has acquired distinctiveness (e.g., after five years of continuous, exclusive use). See TMEP § 1609.09. This is how marks such as CHIPOTLE MEXICAN GRILL are now registered on the Principal Register.

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3. Comparing the Principal Register and the Supplemental Register

The following chart provides a comparison of the benefits and other attributes of a registration on the Principal Register and a registration on the Supplemental Register.

Benefit/Attribute of a Registration Principal Supplemental

Right to give notice of a federal trademark registration using the ® symbol

Right to assert claims in federal court for infringement of a registered mark

A mark owner may apply for registration on an intent-to-use basis

Provides constructive notice to defeat defense of good-faith adoption

Statutory presumption of the validity of the registered mark

Statutory presumption of the registrant’s ownership of the mark

Statutory presumption of the registrant’s exclusive nationwide rights

May become incontestable after five years of registration

Right to record the mark with CBP for seizure of counterfeit goods

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Benefit/Attribute of a Registration Principal Supplemental

May be cited by USPTO examiner against subsequent application

May be challenged through a cancellation proceeding

May be challenged through an opposition proceeding

Marks that are merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily merely a surname may be registered without a showing of acquired distinctiveness

B. Bases for Filing an Application

There are five bases for filing a trademark application with the USPTO (see TMEP § 806.01):

Bases for Trademark Registration in the United States

1. Actual use in commerce (Lanham Act § 1(a), 15 U.S.C. § 1051(a))

2. Intent to use (Lanham Act § 1(b), 15 U.S.C. § 1051(b))

3. Foreign registration (Lanham Act § 44(e), 15 U.S.C. § 1126(e))

4. Foreign application (Lanham Act § 44(d), 15 U.S.C. § 1126(d))

5. Foreign extension of an International Registration under the Madrid Protocol (Lanham Act § 66(a), 15 U.S.C. § 1141f(a))

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Anyone may utilize the first two bases, whereas only non-U.S. citizens may file an application under one of the last three bases. Which filing basis a mark owner chooses depends on whether and where the mark is in use or already registered, as well as on the resources and time available to the mark owner. Each of the five bases for filing an application in the United States is summarized below.

1. Actual Use—Section 1(a)

The most common basis for a federal trademark application is that the mark is already in use in commerce. Such an application is known as a use-based application and is covered under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). A use-based application requires the applicant to verify that, as of the application filing date, the mark is actually in use in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. § 1051(a)(3)(C); 37 C.F.R. § 2.34(a)(1)(i).

For goods, the term “use in commerce” means that the mark must have been affixed to goods sold or transported in interstate commerce; for services, “use in commerce” means the mark has been displayed in connection with the sale or advertising of the services. See 15 U.S.C. § 1051(a)(3)(C)). Note that the applicant must verify that, as of the date on which the application was filed, the mark has been in use on or in connection with all of the goods and services for which the applicant claims a Section 1(a) basis. 37 C.F.R. § 2.34(a)(1)(i).

The advantages of a use-based application generally are cost and speed. The costs of a use-based application are less because the applicant does not have to file later a separate allegation of use and pay the associated filing fee, as required for an intent-to-use application. For the same reason, generally, a mark that is the subject of a use-based application proceeds to registration sooner than one that is the subject of an intent-to-use application.

Practice Tip

Use of a mark for purposes of claiming priority can be any use of the mark that qualifies as “use in commerce” to register a mark or any use that courts have deemed to be “analogous” to trademark use, such as pre-sales publicity or orders, and sometimes even trade name use.

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2. Intent to Use—Section 1(b)

A mark owner also may file an application for registration on the Principal Register without yet having used the mark at all. Such an application is known as an intent-to-use (or ITU) application and is covered under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b). An intent-to-use application requires the applicant to verify that, as of the application filing date, the applicant has a bona fide intent to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. § 1051(b)(3)(B); 37 C.F.R. § 2.34(a)(1)(i). In other words, an ITU application is not intended as a means of reserving any mark for future use; rather, it provides an opportunity for one who actually intends to use a mark in the near future to establish a constructive use date by filing an application. Through an intent-to-use application a mark owner has the opportunity to claim rights in a mark three years or more before using it.

For an ITU application, prior to registration, the applicant must file an allegation of use—either (a) an amendment to allege use prior to publication of the mark (see 15 U.S.C. § 1051(c); 37 C.F.R. § 2.76; TMEP § 1104 et seq.) or (b) a statement of use within six months after the issuance of a notice of allowance or within an extension period that may last up to three years (see 15 U.S.C. § 1051(d); 37 C.F.R. § 2.88; TMEP § 1108 et seq.). The allegation of use must state that the applicant is using the mark in commerce on or in connection with the goods or services and give the date of first use. See TMEP § 806.01(b). An applicant may claim both Section 1(a) and Section 1(b) as a basis for filing the same application provided the applicant identifies different goods and services for each basis. 37 C.F.R. § 2.34(b)(1); TMEP § 806.02(b). Also note that a mark owner may not file an application to register a mark on the Supplemental Register on an intent-to-use basis. TMEP § 1102.03.

3. Foreign Registration—Section 44(e)

A non-U.S. citizen may seek registration under Section 44(e) of the Lanham Act, 15 U.S.C. § 1126(e), based on one or more registrations already issued in the

Practice Tip

Filing an application on a use basis for some goods/services and an intent-to-use basis for other goods/services usually is a bad idea. The extra requirements for an ITU application may delay the registration as a whole. Instead, consider filing separate applications.

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applicant’s home country that cover the same mark and essentially the same goods and/or services. An applicant may seek registration under Section 44(e) only if his or her home country is a party to a convention or treaty to which the United States also belongs and that grants the same rights to U.S. citizens in that country (e.g., Paris Convention, Inter-American Convention, World Trade Organization, European Union). See TMEP §§ 1002.01, 1002.03.

The great advantage of a Section 44(e) application is that, unlike applications under Sections 1(a) and 1(b), an applicant for registration under Section 44(e) need not establish that the mark was in use in commerce in the United States prior to the issuance of the U.S. registration. However, the applicant must submit to the USPTO a copy of the foreign registration, as well as a verified statement that, as of the filing date of the application, the applicant has a bona fide intent to use the mark in commerce on or in connection with the goods and/or services listed in the application. TMEP § 806.01(d). The priority date for an application filed under Section 44(e) is the date of the U.S. application, not the date of the foreign application, as would be true under Section 44(d).

4. Foreign Application—Section 44(d)

A non-U.S. citizen also may file an application for registration under Section 44(d) of the Lanham Act, 15 U.S.C. § 1126(d), based on a prior application filed in a foreign country within the six-month period preceding the U.S. application. For an applicant to qualify for registration under Section 44(d), the applicant’s home country or the country in which the foreign application was filed must be a party to a convention or treaty to which the United States also belongs and that grants the same rights to U.S. citizens in that country (e.g., Paris Convention, Inter-American Convention, World Trade Organization, European Union). See TMEP §§ 1002.02, 1002.03.

The major benefit of filing an application under Section 44(d) is that the applicant may claim a date of priority as of the filing date of the foreign application (rather than the foreign registration date), provided (1) the applicant files the application in the United States within the six-month period after the applicant files the foreign application, (2) the U.S. application covers goods and/or services that do not exceed the scope of those covered by the foreign

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application, and (3) the foreign application later matures into a registration. TMEP § 806.01(c).

Similar to an applicant under Section 44(e), an applicant under Section 44(d) need not establish that the mark was in use in commerce in the United States before the issuance of the U.S. registration. However, an applicant under Section 44(d) must submit to the USPTO information about the foreign application (filing date, serial number, and country), as well as a verified statement that, as of the filing date of the U.S. application, the applicant has a bona fide intent to use the mark in commerce on or in connection with the goods and/or services listed in the application. TMEP § 806.01(c). An application under Section 44(d) will not be published for opposition unless and until the foreign application matures into a registration and the applicant establishes a basis for filing under Section 1(a), 1(b), or 44(e) of the Lanham Act. See TMEP §§ 806.01(b), 1003.03; 37 C.F.R. § 2.34(a)(4)(iii).

5. Foreign Extension (Madrid Protocol)—Section 66(a)

A non-U.S. citizen also may obtain formal protection of a mark in the United States by requesting an extension of protection based on an International Registration under the Madrid Protocol, which is administered by the World Intellectual Property Organization (WIPO). The statute governing this type of application is Section 66(a) of the Lanham Act, 15 U.S.C. § 1141f(a). The official protection afforded such a mark is known not as a “registration” but rather as an “extension of protection.” For detailed information on extensions of protection under the Madrid Protocol, visit WIPO’s website, which also contains a copy of the Madrid Protocol.

The basic procedure for obtaining a foreign extension of an International Registration under the Madrid Protocol is to submit a request for extension of protection to the International Bureau of WIPO, which then forwards the extension request to the USPTO for prosecution of the request in the same manner as any other application. TMEP § 806.01(e); 37 C.F.R. § 2.34(a)(5). The request for extension must include a declaration that the applicant has a bona fide intent to use the mark in commerce. TMEP § 804.05. For more information

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on seeking an extension of protection in the United States under the Madrid Protocol and avoiding provisional refusals, see WIPO’s Notice on this topic.

U.S. trademark owners also may utilize the Madrid Protocol to seek an extension of protection in a foreign nation based on one or more U.S. applications or registrations. A U.S. applicant must file such an international application with the USPTO, which certifies that the application meets certain requirements and then forwards it to WIPO. For more information on filing for an extension of protection under the Madrid Protocol, see the Madrid FAQs page on the USPTO’s website.

III. Pre-Application Due Diligence

Months or even years before the filing of an application, the Administrator and the trademark lawyer should be working closely with the client to answer a number of questions. The Administrator’s primary role during this stage is to gather information and find answers to the “who,” “what,” “when,” and “where” questions. He or she does so by working with the mark owner to document the history and current use of the mark and other information necessary to file the application. During the pre-filing stage, the lawyer’s primary role is to assist the mark owner in answering the “why” and “how” questions by identifying the owner’s end goals and mapping out a strategy to achieve those goals. The result of this cooperative effort should be an application that is well thought out, accurate, complete, and likely to succeed.

A. Questions to Ask Before Filing an Application

Pre-application due diligence requires answers to several who, what, when, where, why, and how questions, which should be answered before an application is filed.

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Who? What? When?

1. Who owns or will own the mark? (which specific entity or entities)

2. Who has owned the mark? (establish chain of title)

3. Who is using or will use the mark? (licensed or unauthorized use)

4. Who is using similar marks? (possible third-party conflicts)

5. Who is authorized to decide whether to file the application? (party that signs the application)

1. What mark should be protected? (character, stylized, design, color)

2. What goods/services are covered? (identification and classification)

3. What evidence is there of use? (use-based (specimens) vs. intent to use)

4. What is the significance of mark? (meaning, descriptive, suggestive)

5. What quality control is in place? (avoid naked licensing)

1. When was the mark first used? (date of first use)

2. When was first use in commerce? (date of first use in commerce)

3. When did others begin using it? (possible priority problems)

4. When did the mark acquire distinctiveness? (for Section 2(f) claims)

5. When will actual use begin? (for ITU applications)

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Where? Why? How?

1. Where has the mark been used? (understand common-law rights)

2. Where is the mark being used? (establish interstate use)

3. Where will the mark be used? (jurisdictions where protection is needed)

4. Where are others using the mark? (possible common-law conflicts, concurrent use registration)

5. Where are records found? (documenting use/history)

1. Why was this mark selected? (good faith; meaning of mark)

2. Why file an application now? (risk of others’ jumping ahead)

3. Why not wait until later? (costs less if client waits until mark is in use)

4. Why might the PTO reject it? (anticipate refusals to register)

5. Why is a registration necessary? (value, exclusivity, enforcement)

1. How is the mark being used? (different iterations, trademark use)

2. How much of the mark should be registered? (all or part)

3. How are others using the mark? (possible third-party conflicts)

4. How has the mark been used? (changes in the mark, goods and services, markets, consumers)

5. How long has mark been used? (establish continuous use)

B. Documenting a Mark’s History

Answers to the questions listed above may already be available without further investigation if the Administrator has thoroughly documented the selection, adoption, and historical use of the mark over time. Maintaining accurate and complete records of a mark’s history can help the client avoid substantial problems, ranging from priority disputes to procedural and substantive office actions. Below is a non-exhaustive list of details about a mark’s history of which an Administrator should have an accurate record at any given time, and the reasons for documenting this information.

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Historical Information to Document

Reasons for Documenting This Information

Complete description of the initial design, selection, and adoption of the mark

To understand the mark’s meaning, the reasons for choosing the mark, and the overall trademark strategy

Date of first use anywhere and date of first use in interstate commerce

To establish length of use and dates of priority and to avoid or more easily resolve disputes over priority

Different iterations of the mark and designs, phrases, or taglines used with the mark

To determine whether changes to the mark over time are material alterations; changing of rights based on prior iterations

Comprehensive list of goods and services used with the mark

To establish the scope of one’s rights and to accurately reflect the goods and services in an application or registration

Specimens and examples of use with all goods and services with which the mark is used

To simplify the application process and to ensure that the mark is being used with all listed goods and services

Prosecution history of the mark and similar marks (e.g., office actions and responses)

To anticipate potential problems during prosecution and with others, and to maintain consistency of positions

Disputes (e.g., demand letters, oppositions, cancellations, litigation, settlement terms)

To understand the scope of one’s trademark rights, including restrictions on use of the mark and rights vis-à-vis others

C. Gathering Information Pertinent to the Application

Once the mark owner makes the decision to file an application, the Administrator must identify or otherwise gather the information necessary to file the application. Following is a checklist of functions that an Administrator should perform before an application is filed.

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Step Key Functions of the Administrator Before Filing an Application

1. In consultation with the mark owner and the lawyer, identify which exact mark will be registered.

2. Gather facts about the mark to be registered, including (a) the spelling of the mark; (b) the form of the mark (standard character, stylization, design); (c) whether to claim color vs. black and white; (d) whether any terms have special meaning or require translation; and (e) any disclaimed terms.

3. Obtain an accurate drawing of the mark based on the facts gathered about the mark.

4. Prepare a complete list of goods and services with which the mark is being used and/or will be used.

5. Identify the international class in which each of the goods and services falls.

6. Collect specimens for each class of goods and services with which the mark is being used and confirm that these specimens match the drawing and accurately show use of the mark in commerce.

7. Determine and substantiate the date of first use anywhere and date of first use in commerce, or projected dates of first use, for each class of goods and services with which the mark is being used or will be used.

8. Identify the correct name of the owner of the mark, the type of entity, and its state of incorporation.

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Step Key Functions of the Administrator Before Filing an Application

9. Identify the basis on which registration will be sought and the information necessary for that basis.

(a) Section 1(a) (actual use): Document evidence of the mark’s use in commerce.

(b) Section 1(b) (intent to use): Document the bona fide intent to use the mark in commerce.

(c) Section 44(e) (foreign registration): Gather information regarding the foreign registration.

(d) Section 44(d) (foreign application): Gather information regarding the foreign application.

(e) Section 66(a) (extension of protection under Madrid Protocol): Gather information regarding the International Registration.

10. Identify other applications or registrations for the same or a similar mark owned by the applicant.

11. Identify the proper person to sign the application (someone who can sign the declaration based on personal knowledge) and determine the correct name (watch spelling) and title of that person.

12. Identify any needed information that is missing or unavailable and confer with the lawyer about the best way to gather such information (e.g., communications with client, Internet investigation).

IV. Application for Federal Registration

Once information relevant to a mark has been documented and compiled, the Administrator can begin the process of applying to register the mark and thereafter prosecuting the application through registration. The actual process of preparing, filing, and prosecuting a trademark application can be extremely detailed, complex, and lengthy. The average length of time from initial filing of

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the application to registration of the mark is almost a year. Each step in the process is fraught with potential risks, and any number of problems, mistakes, or delays can occur during prosecution.

At the same time, an understanding of the overall picture and the basic steps necessary to prepare, file, and prosecute an application can simplify the process. An Administrator who is generally familiar with the key statutes (15 U.S.C. §§ 1051–1057), regulations (37 C.F.R. §§ 2.21–2.89), and rules (the Trademark Manual of Examining Procedure (TMEP)) governing the trademark application process can look up the answers to most problems that might arise. A truly skilled trademark practitioner will be aware of the strategic nuances of the process that will reduce the risk of problems for his or her client down the road.

A. Overview of the Trademark Application and Prosecution Process

The process begins when an applicant files an application. The USPTO accepts it and then assigns it a serial number. About three months later, the USPTO assigns the application to an examining attorney (a.k.a. “examiner”), who conducts an initial examination of the application to determine whether it meets the statutory requirements for registration of the mark. If the application is incomplete or incorrect or the mark violates a statutory bar to registration (e.g., the mark is likely to cause confusion with a prior-registered mark), the examiner will issue an office action, a priority action, or, usually in consultation with the applicant, an examiner’s amendment. An office action (or a priority action) often will contain a refusal to register the mark; the applicant then has six months to respond to the office action by correcting any problems or otherwise convincing the examiner that the refusal should be withdrawn. If the issues are not resolved, the examiner will issue a final refusal, which the applicant may appeal.

If there are no further problems with the application and the examiner withdraws any remaining refusals, the mark will be published for opposition purposes. The opposition period lasts for 30 days, during which a third party may oppose registration of the mark on various grounds, such as priority of use. If nobody opposes the application or if any opposition is refused, a mark that is the subject of a use-based application typically will proceed to registration. For a successful

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intent-to-use application, the USPTO will issue a notice of allowance, and the applicant then has six months to file a statement of use or one or more extension requests allowing another six months to file a statement of use. If all goes well, the USPTO will issue a certificate of registration.

Exhibit 2 and Exhibit 3 are flowcharts for a use-based application and an intent-to-use application, respectively. These provide a graphic representation of the process. The USPTO also provides several videos, available through YouTube and USPTO.gov, that give a complete (and sometimes humorous) overview of and tips regarding trademark prosecution.

B. Preparing and Filing an Application

An applicant may file an application to register a mark with the USPTO under Section 1(a), 1(b), 44(e), or 44(d) of the Lanham Act by submitting an electronic application through the Trademark Electronic Application System (TEAS) or on a paper form. The USPTO strongly encourages applicants to file electronically because of the ease and efficiency of doing so.

1. Administrator Functions in Filing an Application

Assuming that the Administrator has gathered all the information detailed in the checklist in Section III.C, above, he or she can begin the actual process of preparing and filing the application by completing each of the following steps:

Key Functions of the Administrator in Preparing and Filing an Application

1. Review the relevant application procedures and requirements for the type of application being filed.

2. Prepare a complete draft of the application for the lawyer to review (refer to Sections IV.C to IV.L, below, for details).

3. Confer with the lawyer and the client to correct or add information and to complete the application.

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Key Functions of the Administrator in Preparing and Filing an Application

4. Finalize the application and present to the lawyer and the appropriate client representative for signature.

5. File the application with the USPTO electronically or by delivering a complete application in paper form.

6. Confirm receipt of the application by the USPTO and the issuance of a serial number for the application.

7. Inform the relevant parties that the application was filed and provide a copy of the application to the client.

8. In coordination with the client and the lawyer, correct any errors in the application that are correctable.

9. Docket the filing of the application and calendar any deadlines calculated from the filing date.

2. Electronic Application (TEAS, TEAS RF, and TEAS Plus)

The best and most popular method of filing and prosecuting a trademark application with the USPTO is electronically. The entire trademark application process is now available electronically. Almost all new applications are processed electronically; more than 80 percent are prosecuted completely electronically from initial filing to final disposition.

As shown in the following table, there are numerous advantages to filing an application electronically.

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Advantages to Filing an Application Electronically

Speed and efficiency. Trademark applicants can file (and the USPTO can process) electronic applications much faster and more efficiently than paper applications.

Earlier filing date. Because the filing date of an application is the date on which all the elements set forth in 37 C.F.R. Section 2.21(a) are received by the USPTO, a complete electronic application allows an applicant to obtain a filing date immediately.

Lower cost. The filing fees for electronic applications are lower than the fees for paper filings; TEAS Plus (see below) filing fees are lower than regular TEAS filing fees. Not having to pay for postage, faxing, courier costs, and other expenses also saves money.

24-hour availability. TEAS (generally) is available 24 hours a day, 7 days a week, over the Internet (except from 2 a.m. to 6 a.m. EST on Sundays, when credit card processing is not available).

Validation. TEAS generally will not allow submission of information that is incorrect on its face (e.g., that does not match other information in the application) or of required information that is missing.

Help. TEAS provides helpful hyperlinks to pages with explanations about terms used and information required by the TEAS forms.

Accuracy. Because TEAS automatically saves the applicant’s submissions in the USPTO’s database, the information in the application will be as accurate as it was when submitted.

Faster confirmation. The USPTO sends out an electronic filing receipt with an application serial number almost instantaneously upon the filing of an application. Also, the application appears sooner in TSDR (Trademark Status and Document Retrieval).

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An applicant may file an electronic application for registration of a mark on the Principal Register through a regular TEAS application, a TEAS RF application, or a TEAS Plus application, each of which is available on the USPTO’s website. For convenience, the USPTO also provides sample electronic copies of complete previews of the regular TEAS application, the TEAS RF application, and the TEAS Plus application, so that applicants can review the entire application before accessing the TEAS system to fill in and submit the application. Those new to filing an electronic application should review the USPTO’s TEAS “Nuts and Bolts” video series.

The advantage of a TEAS Plus application is that it is the most efficient and cost-effective way to register a mark on the Principal Register. On average, TEAS Plus applications go through the prosecution process months faster and have a greater likelihood of proceeding to registration than other applications. Also, the fees for a TEAS Plus application are $50 less per class than those for a TEAS RF application and $100 less than those for a regular TEAS application.

The USPTO also imposes certain unique requirements on a TEAS Plus application. Most importantly, unlike other TEAS applications, a TEAS Plus application must contain an identification of goods/services directly from the USPTO’s Acceptable Identification of Goods and Services Manual (“ID Manual”). TMEP § 819.01(g).

The TEAS Plus application is available only for marks to be registered on the Principal Register under Section 1 and/or Section 44 of the Lanham Act. An applicant cannot use TEAS Plus to file applications for certification marks, collective marks, or collective membership marks, or for applications for registration on the Supplemental Register. TMEP § 819.01.

A TEAS Plus application also must contain more complete information than a regular TEAS application. See 37 C.F.R. § 2.22(a). Further, an applicant utilizing TEAS Plus agrees to file all communications regarding the application electronically through TEAS and to receive all communications regarding the application via email. TMEP § 819.02. If these requirements are not met, the examining attorney will require the applicant to pay the additional fee required for a regular TEAS application. TMEP § 819.01.

Practice Tip

If the goods/services with which a client’s mark is being or to be used are not listed in the ID Manual, you can email the USPTO and request that they be added (tmidsuggest@uspto.gov).

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The USPTO also has a TEAS RF (Reduced Fee) application, which allows an applicant to pay a reduced fee ($50 less than a regular TEAS application but still $50 more than a TEAS Plus application) if the applicant agrees to file the application and other documents concerning the application through TEAS and to receive communications from the USPTO through email. TMEP § 820. Unlike a TEAS Plus application, however, a TEAS RF Application need not contain an identification of goods/services directly from the ID Manual, and a TEAS RF application may be used to register a certification mark, collective membership mark, or collective trademark. If a TEAS RF applicant does not comply with the TEAS filing or electronic communications requirement, the application will lose its TEAS RF status and the applicant must pay an additional TEAS filing fee of $50 per class.

3. Other Electronic Prosecution Forms

The USPTO’s website provides numerous other electronic forms for virtually every aspect of filing and prosecuting applications, each of which may be filled out and submitted online. In addition to the forms themselves, the USPTO also provides a complete preview of many of these forms in .pdf format. Below are links to the various categories of forms available through the USPTO website. Exhibit 4 is a complete table with the name and description of each available form.

Electronic Forms Available from the USPTO

1. Initial Application Forms

2. Response Forms

3. Intent-to-Use (ITU) Forms

4. Post-Approval/Publication/Post-Notice of Allowance (NOA) Forms

5. Correspondence and Lawyer/Domestic Representative Forms

6. Petition Forms

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Electronic Forms Available from the USPTO

7. Miscellaneous Forms

8. Registration Maintenance/Renewal/Correction Forms

9. Assignment Forms

10. Trademark Trial and Appeal Board (TTAB) Filings

11. Madrid Protocol Forms

4. TEAS Practice Tips

Below is a list of useful practice tips to remember when using TEAS.

TEAS Practice Tips

1. Most errors can be avoided simply by thoroughly reading the instructions on the electronic forms, and by using the hyperlinks for explanations about the terms and fields within each form.

2. A second set of eyes can catch costly mistakes that may make the TEAS application useless. The Administrator and the lawyer each should review the TEAS application on screen or on paper before submission.

3. TEAS allows a user to save a form that has been filled out without submitting it. This allows a user to save a form, send it to a client for review and approval, and then return to change or submit the form.

4. Submissions in TEAS are time-stamped using local time for the USPTO—Eastern Standard Time. As long as a submission is made by 11:59 p.m. EST, it will be given that day’s filing date.

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TEAS Practice Tips

5. Save all filled-out forms. TEAS is programmed to time out after 60 minutes. If a user does not save his or her data during that time or extend the session, such data may be lost.

6. Formatted text copied from a word processor into a TEAS form may appear in a different format, introduce unwanted characters, and/or prevent successful validation of the form. Many forms allow users to submit a separate PDF file containing the applicant’s preferred formatting for the submission.

7. Anti-spam filters may block automatic emails from the USPTO generated after a user submission. A user should ensure that emails from TEAS@uspto.gov are not falsely labeled as spam or junk.

8. When using TEAS, do not use the “back” and “forward” buttons in the Web browser. Instead, use the “Go Back” and “Continue” buttons provided at the bottom of each TEAS form.

9. TEAS may not function properly if cookies or JavaScript features are disabled in the browser.

10. TEAS occasionally goes down as a result of a planned or unplanned outage in service. To check information on system availability, you can visit the USPTO’s System Status and Availability web page.

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5. Paper Application

While the USPTO strongly encourages electronic filing, it still allows paper submission of forms. The USPTO does not provide these forms for paper submission online. However, an applicant may obtain preprinted forms for an application by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. See TMEP § 802. The fee for filing a paper application is higher than for an electronic application. Id. An applicant may file paper submissions in person, by U.S. mail, or by other delivery service, but cannot fax an application to the USPTO. Id. The mailing address to which to send an application is: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451.

The USPTO strongly discourages self-created forms, but it will still accept them if they meet certain requirements. See TMEP § 802. Application forms that do not meet the minimum requirements for receipt of a filing date set forth in 37 C.F.R. Section 2.21(a) are void. TMEP § 204. Also, the USPTO has specific formatting requirements for self-created forms. TMEP § 802.

C. Elements of an Application

There are certain minimum elements that an initial application must contain to receive a filing date, and there are additional elements that an application must contain to be considered “complete.”

Practice Tip

Sometimes it may be necessary to file a paper form, such as when there are Internet outages or the USPTO website is down. Note that the effective filing date of an application is the date on which the USPTO receives the minimum elements of the application (not the date that they are sent).

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1. Minimum Elements of an Application

To receive a filing date for an application, an applicant must submit the following minimum information in the application (see 37 C.F.R. § 2.21(a); TMEP § 202):

D. Elements of a Complete Application

Although an application may be accepted without all of the information needed for a complete application, an Administrator should make an application as complete and accurate as possible to avoid office actions or other delays in prosecuting the application. The following checklist shows the elements of what the USPTO will consider a “complete” application (see TMEP § 818).

Checklist for a “Complete” Application

1. Information about the Applicant

a. Legal Name. The applicant’s legal name, and DBA designation if appropriate.

b. Entity Type. The type of legal entity that the applicant is (if not an individual).

Practice Tip

TEAS does not allow submission of an application that does not meet the minimum requirements to receive a filing date. Still, an Administrator should verify the accuracy of the information, because certain incorrect information may render an application void.

Application Elements Required to Receive Filing Date

1. The correct name of the applicant.

2. A name and address for correspondence.

3. A clear drawing of the mark.

4. A listing of the goods or services.

5. The filing fee for at least one class of goods or services.

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Checklist for a “Complete” Application

c. Partners and Members. If the applicant is a domestic partnership or domestic joint venture, the names and citizenship of the general partners or active members of the joint venture.

d. Citizenship. The country of which the applicant is a citizen, or the state or country of incorporation or organization if the applicant is a legal entity.

2. Information About the Mark Itself

a. Drawing. A single drawing of the mark (not multiple inconsistent drawings).

b. Specimen. For an application under Section 1(a), one specimen for each class.

c. Standard Character Statement. If registering the mark in standard characters, a statement that “the mark consists of standard characters without claim to any particular font style, size, or color.”

d. Description of Mark. If claiming stylization or design, an accurate description of the mark.

e. Color. If the mark includes color, a color claim naming the colors that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark.

f. Translation and Transliteration. A translation of non-English wording and transliteration of non-Latin characters in the mark, if any.

g. Living Individual. If appropriate, a statement of whether the mark is composed of the name or likeness of any living individual and whether his or her consent is of record.

3. Information About Use of the Mark

a. Good(s)/Service(s). A complete identification of the goods and services with which the mark is in use or will be in use.

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Checklist for a “Complete” Application

b. Class(es). The international classification of the goods and services with which the mark is in use or will be in use, if known to the applicant.

c. Dates of First Use. In an application under Section 1(a), the dates when the mark was first used and first used in commerce with the goods or services in each class.

d. Use by Related Entity. If use of the mark is only by one or more related entities and inures to the applicant’s benefit, a statement that the mark is being used by a related entity or entities.

4. Verification and Signature

a. Truth of Facts Recited. A statement that, “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.”

b. Use vs. Intent to Use. A verified statement that the applicant is using the mark in commerce (for a Section 1(a) application) or has a bona fide intent to use the mark in commerce (for a Section 1(b) or Section 44 application).

c. Statement of Ownership and Entitlement to Use. A verified statement that the person signing the application believes the applicant to be the owner of the mark sought to be registered (for a Section 1(a) application), or to be entitled to use the mark in commerce (for a Section 1(b) or Section 44 application).

d. Statement of Lack of Knowledge of Superior Rights. A verified statement that, to the best of the verifier’s knowledge and belief, no other person or entity has the right to use such mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of the other person, to cause confusion, or to cause mistake, or to deceive.

e. Signature. An application must be signed by the applicant or by someone authorized to verify facts on behalf of the applicant. The verification may be in the form of an oath or declaration.

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Checklist for a “Complete” Application

5. Other Information and Elements Required

a. Application Date. The date on which the application was signed.

b. Basis. A basis for filing—Section 1(a), 1(b), 44(e), 44(d), or 66(a).

c. Prior Registrations. A list of the applicant’s prior registrations of the same or similar marks, if any.

d. Application Based on Foreign Application. In a Section 44(d) application, information about the foreign application, including the filing date, country, and serial number.

e. Application Based on Foreign Registration. In a Section 44(e) application, a valid copy of the registration in the applicant’s country of origin, and a translation of the foreign registration if it is not in English.

6. Filing Fee

a. Fee Payment. The proper filing fee for each class of goods/ services.

With this checklist in mind, the sections immediately below provide useful information and practice tips regarding the major elements of an application. Potential mistakes and how to avoid them are also highlighted.

E. Applicant

Applicants may be individuals (a.k.a. “natural persons”) or legal entities (a.k.a. “juristic persons”). TMEP § 803.01. Juristic persons include corporations, partnerships, joint ventures, unions, associations, and any other organization capable of suing and being sued in a court of law. See 15 U.S.C. § 1127. Even government entities or quasi-governmental entities operating with governmental authorization may be trademark applicants. TMEP § 803.01.

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It may seem obvious that the applicant for registration of a mark must be the mark’s owner or the party that has a bona fide intent and right to use the mark in commerce. However, misidentifying the applicant is one of the most common and costly errors in applications. If an applicant is not the owner of the mark (or is not the one entitled to use the mark) at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant. TMEP § 803.06.

Following are some of the most common errors regarding identification of an applicant.

Error in Identifying an Applicant Example

Incorrect spelling of the applicant’s legal name, or inconsistency between name and entity type.

ABC Corp., a Nevada limited liability company

XYZ, Inc., a New York limited partnership

Incorrect citizenship of the applicant. Texas corporation vs. a Florida corporation

Named applicant does not yet exist as a legal entity at the time of the application.

Application filed before the filing with the state of the articles of incorporation for the applicant.

Named applicant does not yet own or no longer owns the mark.

Application filed prior to the effective date of an assignment of the mark to the applicant.

Named applicant does not have authority to file.

Named applicant is only one owner of the mark (i.e., there is more than one owner).

Incorrect address or headquarters of the applicant.

ACME Company, 1600 Pennsylvania Ave., Washington, D.C.

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For examples of correctable and non-correctable errors in identifying the applicant, see TMEP § 1201.02(c); see also TMEP § 1201.02(e) and TMEP Chapter 500 regarding the situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.

F. Form of Mark

The USPTO requires an applicant to choose between two forms of marks: (1) a “standard character” mark and (2) a “special form” mark (37 C.F.R. § 2.52(a)-(b); TMEP §§ 807.03, 807.04). As outlined below, there are advantages and disadvantages to registering each type of mark, and there are numerous different requirements for each.

1. Standard Character Marks

A standard character mark is a mark that claims no particular stylization, design, color, or other elements other than its standard text characters. Registration of a standard character mark often is preferred because it is viewed as granting the broadest rights in a mark. The registrant of a standard character mark may use the mark in any form and is entitled to preclude others from registering, and often from using, a confusingly similar mark that claims a different form.

There are several requirements for registering standard character marks, which an Administrator should review prior to filing the application (see 37 C.F.R. § 2.52(a); TMEP § 807.03):

Requirements for Standard Character Marks

1. The mark must not include a design element.

2. All letters and words in the mark must be depicted in Latin characters.

3. All numerals in the mark must be depicted as Roman or Arabic numerals.

Practice Tip

Choosing the correct form of the mark is an important decision. Attempting to amend an application from a standard character mark to a special form mark (or vice versa) may be rejected as an impermissible material alteration. See TMEP § 807.03(d).

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Requirements for Standard Character Marks

4. The mark includes only common punctuation or diacritical marks.

5. The applicant cannot claim any stylization of lettering and/or numbers in the mark.

6. The mark cannot contain underlining, superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set.

7. The characters of the mark cannot form shapes or designs, such as emoticons.

An applicant seeking registration of a standard character mark must submit the following statement in support of the application: “The mark consists of standard characters without claim to any particular font style, size, or color.” TMEP § 807.03(a).

2. Special Form Marks

A special form mark contains elements other than the standard characters, such as stylization, design, color, unusual forms of punctuation, or non-visual elements. TMEP § 807.04. An applicant registers a mark in a special form when the applicant wants to protect distinctive elements of the mark, such as its color, its font, or artistic designs that are part of the mark. Registration of special form marks also is common where the word elements of a mark are found in other marks but the applicant uses (or intends to use) the mark in a distinctive manner with respect to its stylization, design, and/or color.

The following table provides a description and the rules governing different special form marks, as well as examples of the different types of special form marks. Note that a particular mark may incorporate one or more of these special forms.

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Description and Rules for Special Form Marks Example Mark(s) and Description

Stylized Mark. A mark claiming any stylization, such as underlining or italicization; or characters outside of the USPTO’s standard character set, such as superscripts, subscripts, or exponents. TMEP § 807.04.

No description is necessary for a mark composed solely of stylized words in all Latin characters.

Design Mark. A mark containing a design other than words. The description of a design mark needs only to state generally the elements that capture the essence of the mark. TMEP § 808.02. Common geometric shapes and background designs may not be protectable absent evidence of acquired distinctiveness. TMEP § 1202.11.

A “wing” design or “swoosh” (Nike, Inc.),

“An apple with a bite removed” (Apple Inc.).

Color Mark. Any mark containing color. An application claiming color as a part of the mark must contain (1) a claim that the colors are a feature of the mark, (2) the names of the colors, and (3) a description of where the colors appear in the mark. 37 C.F.R. § 2.52(b)(1); TMEP § 807.07(a). If color is not claimed as a feature of the mark, the drawing should show the mark in black on a white background. 37 C.F.R. § 2.52(b).

The color(s) blue, red, yellow, and green is/are claimed as a feature of the mark. The mark consists of a stylized version of the word GOOGLE. The first letter, “G,” is blue; the second letter, “O,” is red; the third letter, “O,” is yellow; the fourth letter, “G,” is blue; the fifth letter, “L,” is green; and the sixth letter, “E,” is red.

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Description and Rules for Special Form Marks Example Mark(s) and Description

Three-Dimensional Mark. A mark containing three-dimensional design features. The mark must be presented in a single rendition and must indicate that it is three-dimensional.

A human statuette standing atop a pedestal (Academy of Motion Picture Arts and Sciences).

Sound Mark. A mark that identifies and distinguishes a product or service through audio rather than visual means. TMEP § 1202.15. An application for a sound mark requires a “detailed description” and should state that it is for a “non-visual mark.” TMEP § 807.09.

• The sound of a duck quacking the word “AFLAC.”

• A lion roaring, for motion picture films and prerecorded videos (MGM).

• The sound of a childlike human giggle, which represents the Pillsbury Doughboy’s giggle.

Scent Mark. A smell or fragrance used in a nonfunctional manner to identify and distinguish a product or service. TMEP § 1202.13. Scent marks require a detailed description and may be registered only upon a showing of acquired distinctiveness under Section 2(f). TMEP § 807.09.

Vanilla, apple cider, peppermint, peach, lavender, and grapefruit, for office supplies, namely, file folders, hanging folders, paper expanding files (Smead Manufacturing Company). Note: Perfume and cologne scents are functional and therefore not registrable.

Flavor Mark. A taste used in a nonfunctional manner to identify and distinguish a product or service. TMEP § 1202.13. Flavor marks require a detailed description and may be registered only upon a “substantial showing” of acquired distinctiveness under Section 2(f). TMEP § 807.09.

While various applicants have attempted to register flavor marks, it appears that nobody has ever been successful, based on the high threshold required to register such marks.

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Description and Rules for Special Form Marks Example Mark(s) and Description

Motion Mark. A visual mark that includes a motion as a feature. The application must include a single frame or up to five freeze frames showing the movement, as well as a detailed description. TMEP § 807.11.

Unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position for automobiles (Automobile Lamborghini Holding S.p.A.).

G. Drawing

Each application must include a drawing. The purpose of a drawing is to show the USPTO exactly how the mark appears and to create an electronic image of the mark for the USPTO’s database. The drawing also provides an image for the USPTO to reproduce the mark in the Trademark Official Gazette at publication. Only one mark may be included with a particular drawing.

1. “Substantially Exact”

The drawing is a “substantially exact” representation of the mark as it is used or intended to be used in commerce. 37 C.F.R. § 2.51. This is separate from the requirement of a specimen, which is not a drawing, although the drawing must match the specimen submitted. TMEP § 807. A drawing is not a “substantially exact” representation if it conveys a commercial impression different from that conveyed by the mark. For example, the TTAB found that the mark displayed in the specimen, GOT STRAPS?, conveyed a separate commercial impression than the mark applied for, GOT STRAPS. In re Guitar Straps Online, LLC, Serial No. 85047191 (T.T.A.B. Aug. 9, 2012).

Practice Tip

Don’t be confused by the term “drawing.” Even an application for a standard character mark (with no designs or stylization) will have a drawing.

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2. Electronic Drawings

An electronic drawing for a special form mark must be in .jpg format and scanned at no less than 300 dots per square inch (dpi) and no more than 350 dpi, with a length and width of no less than 250 pixels and no more than 944 pixels. 37 C.F.R. § 2.53(c). For applications covering standard character marks, TEAS automatically creates a digitized image. TMEP § 807.05(a).

3. Paper Drawings

A drawing for a paper application should be submitted on a separate page. TMEP § 807.06(c). The USPTO also has specific and detailed requirements for the size and type of paper, as well as the format for submitting paper drawings. See id.; 37 C.F.R. § 2.54.

H. Description

A description of a mark is mandatory if the mark includes non-Latin characters, non-Roman or non-Arabic numerals, uncommon punctuation or diacritical marks, three-dimensional elements (TMEP § 807.10), color (TMEP § 807.07(a)), motion (TMEP § 807.11), or any non-visual element such as sound or scent (TMEP § 807.09), or if any element of the mark is unclear or ambiguous, or if the standard characters appear in a manner that affects the meaning or overall commercial impression of the mark (e.g., emoticons) (TMEP § 807.03). The description of a mark must be accurate and concise. TMEP § 808.02. A description may not be amended if the amendment causes a material alteration to the mark. TMEP § 808.03(e). See Section IV.E.2, above, for examples of how to craft a proper description of a mark.

I. Classification of Goods and Services

Each good or service covered by an application must be classified in one or more categories known as “classes.” Below is an overview of the classification system and how to classify goods and services.

Practice Tip

Take great care in crafting a description because it could later have an impact on the scope of the applicant’s rights, particularly in the context of trade dress.

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1. Overview of the International Classification System

The USPTO has adopted the most recent version of the international trademark classification system established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2012), published by WIPO. TMEP § 1401.02. This is known as the Nice Classification.

The USPTO will not allow an application to proceed to registration if any goods or services are listed in the incorrect class. The easiest way to avoid this problem is to adopt the identifications and their corresponding international classes listed in the USPTO’s ID Manual. Otherwise, an applicant should attempt to designate the international class or classes for the goods and/or services covered by the application. TMEP § 1401.03(c). Failure to do so will result in the USPTO’s assigning international classes, which could delay the application. Id.

Each application may have more than one class. However, the filing fees for an application generally are determined by the number of classes. TMEP § 1401.04. An application identifying goods or services in more than one class requires the following for each class: (1) a separate filing fee, (2) dates of first use, and (3) a proper specimen for at least one product or service in that class. TMEP § 1403.01.

An applicant may delete a class and prosecute the application only for the remaining classes. TMEP § 1403.02(a). However, the USPTO will not refund the filing fee for deleted classes. Id. An applicant also may limit or narrow (but not expand) the goods and services to the number of classes for which fees have been paid. TMEP § 1401.04(b).

As outlined below, the USPTO applies special criteria to determine the correct international class when a product or service does not otherwise fall within the predefined list or descriptions.

Practice Tip

Practitioners often favor single-class applications because, in a multi-class application, a delay or other problem with one class during prosecution may result in the same delay or problem with the entire application. If this happens, an applicant may file a request to divide the application into separate applications. TMEP § 1110.

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2. Classification of Goods

Goods (i.e., products) must fall within one of the international classes for goods (Classes 1–34). The following table provides general rules for classifying goods and examples of goods that have been classified correctly (TMEP § 1401.05).

General Rule for Classifying Goods Examples

Finished goods generally are classified according to their function or purpose listed in the class headings or in their explanatory notes provided by the USPTO.

• Power stapler (Class 7: machinery)

• Surgical stapler (Class 10: medical apparatus)

• Paper stapler (Class 16: paper goods)

A product that has multiple functions or purposes may be classified in all classes that correspond to such functions or purposes.

• Paint brushes (Class 16: artists’ materials)

• Baseball plate brushes (Class 28: sporting goods)

• Brushes for footwear (Class 21: brushes)

Raw materials generally are classified according to the materials of which they are made.

• Wood boards (Class 19: non-metallic building materials)

• Corn syrup (Class 31: agricultural products)

Goods intended to form part of another product generally cannot be classified in the same class as the product unless such goods normally cannot be used for another purpose.

• Casings of metal (Class 6: metal goods)

• Shell casings (Class 13: firearms)

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3. Classification of Services

Services must fall within one of the international classes for services (Classes 35–45). The following table provides general rules for classifying services and examples of services that have been classified correctly (TMEP § 1401.05).

General Rule for Classifying Services Examples

Services generally are classified based on the types of activities listed in the class headings and explanatory notes.

• Teaching beauty skills (Class 41: educational services)

• Café services (Class 43: restaurant services)

Rental services generally are classified in the same class as the services provided by means of the rented objects.

• Rental of computers (Class 41: computer services)

• Computer systems design (Class 41: computer services)

Services that provide advice or information generally are classified in the same class as the services that correspond to the subject matter of the advice or information.

• Business management advice (Class 35: business services)

• Stock exchange information (Class 36: financial services)

• Legal consulting (Class 45: personal and legal services)

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J. Identification of Goods and Services

Each application must include an accurate identification of the goods and services with which the applicant is using, or has a bona fide intent to use, the mark. TMEP § 1402.01. An applicant should exercise great care in formulating a proper identification of goods and services. This identification not only determines to a large extent the scope of a registrant’s rights but also can be the source of a number of obstacles to registration itself and possibly conflicts with third parties.

The USPTO will automatically accept any identification of goods and services listed in the ID Manual. With few exceptions, an identification of goods and services also will be considered acceptable if it (1) describes the goods and/or services in understandable English; (2) meets the standards (not necessarily the language) set forth in the ID Manual; (3) is not a class heading; and (4) is in the correct class. TMEP § 1402.01(a).

The USPTO generally gives deference to the language set forth by the applicant in the original application. Goods and services listed must be unambiguous and not overly broad. The USPTO’s ID Manual will help determine whether a particular identification is sufficiently definite. See TMEP § 1402.04. TEAS features an ID Assistance Tool that compares a proposed identification with the ID Manual. Note that the sale of one’s own goods is not a properly identified service. Also, the USPTO strongly discourages long lists of goods or services because an applicant usually is not using or does not have a bona fide intent to use the mark with each good or service on a lengthy list.

K. Dates of First Use

A Section 1(a) application and an allegation of use in a Section 1(b) application—but not applications under Section 44(d), 44(e), or 66(a)—must state (1) the date the applicant first used the mark anywhere and (2) the date the applicant first used the mark in interstate commerce for each class of goods or services in the

Practice Tip

Use the ID Manual only if the client’s goods or services actually match the language in the ID Manual. Using an identification from the ID Manual that does not really match the client’s goods or services could cause substantial problems down the road. Often it is worth the $50 more to file a regular TEAS application and customize your own language.

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application. See TMEP § 903. What is the difference between these two dates of first use?

1. “Date of first use anywhere”—the date the goods were first sold or transported, or the services were first rendered, under the mark anywhere, whether inside or outside the United States.

2. “Date of first use in commerce”—the date the goods were first sold or transported, or the services were first rendered, under the mark in interstate commerce.

“Use in interstate commerce” for goods means affixation of the mark to the goods plus sale or transport of the goods in interstate commerce; for services, it means display of the mark in the sale or advertising of the services plus actual rendering of the services in interstate commerce. See 15 U.S.C. § 1127; TMEP § 901. The term “interstate commerce” means any commerce that Congress may regulate. The Supreme Court has held that “interstate commerce” includes purely intrastate activities that have an effect on interstate commerce. For example, even restaurants and hotels with only one location have been found to be using their marks in interstate commerce. See TMEP § 901.03.

What can an applicant do if precise dates are not available because a mark’s history has not been fully documented? In that case, applicants may use terms such as “at least as early as,” “prior to,” “before,” “on or about,” and “in” to describe dates of first use. The USPTO will interpret an ambiguous date to be a date certain by identifying the latest definite date on which the applicant used the mark. The following table provides examples of how the USPTO will interpret ambiguous dates.

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Date of First Use Submitted by

Applicant Presumed Date of

First Use

Date of First Use in Trademark Official Gazette

and on Certificate of Registration

Prior to January 1, 2014

December 31, 2013 12/31/2013

Before September 2010 August 31, 2010 08/0/2010

On or about July 4, 2001

July 4, 2001 07/04/2001

Sometime in 2000 December 31, 2000 0/0/2000

In the 1990s December 31, 1999 0/0/1999

See TMEP § 903.06. Even with these interpretations of ambiguous dates, applicants always should properly document dates of first use and be as specific as possible when listing dates of first use.

Note that applications under Section 44(d), 44(e), or 66(a) need not list dates of first use because there is no use requirement prior to registration for these types of applications. Instead, the constructive date of first use is the priority filing date. See TMEP §§ 901, 1003, 1009.

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L. Specimen

A specimen is a key part of a trademark application because it creates a visual public record of how the mark is used. A Section 1(a) application and an allegation of use in a Section 1(b) application must contain one proper specimen for each class that shows use of the mark on or in connection with the goods, or in the sale or advertising of the services, in commerce. 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a). Applications under Section 44(d), 44(e), or 66(a) need not include a specimen.

Specimens may be filed electronically (TMEP § 904.02(a)), in paper form (TMEP § 904.02(b)), or through electronic and digital media attached to paper filings (TMEP § 904.03(d)). The USPTO prefers that specimens be submitted electronically through TEAS. Electronic specimens must be in .jpg or .pdf format. 37 C.F.R. §§ 2.56(d)(4), 2.161(g)(3).

1. Proper Specimen for Trademarks

A proper specimen for a mark used with goods must show the mark as used on or in connection with the offering or sale of the goods. See TMEP § 904.03. Specimens showing the mark used in the mere advertising or promotion of goods are improper. TMEP § 904.04(b).

Examples of Proper Specimens for Trademarks

1. A tag or label affixed to the goods that shows the mark. TMEP § 904.03(a).

2. A stamping on the goods themselves that shows the mark. TMEP § 904.03(b).

3. A container for the goods that shows the mark, such as commercial packaging or anything in which the good itself is contained (e.g., a gasoline pump). TMEP § 904.03(c).

Practice Tip

Giving the client examples of what kinds of specimens to provide will make it easier for the client to gather proper specimens. Also, often it is beneficial to file more than one specimen for each class, because the examiner may reject one specimen as improper but may accept a different specimen.

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Examples of Proper Specimens for Trademarks

4. A point-of-sale display associated with the goods that shows the mark, such as signs, banners, shelf-talkers, window displays, or menus. TMEP § 904.03(g).

5. A catalog that shows the mark and that includes a means of ordering the goods, or at least information on how to order the goods. TMEP § 904.03(h).

6. A website or other electronic display that shows the mark and that provides a means of ordering or downloading the goods. TMEP § 904.03(i).

7. A manual or other printed matter that shows the mark and that functions as part of the goods (e.g., an instruction assembly manual). TMEP § 904.03(j).

8. For marks displayed on screen (i.e., with software, movies, videos), an applicant may submit a photo or screen capture showing the mark on the screen. TMEP § 904.03(e).

9. For print publications, the examining attorney may require a copy of the publication, although this is usually not necessary. TMEP § 904.02(c)(iii).

10. For those goods with which it is impractical to use the mark on the goods, packaging, or displays (e.g., natural gas, grain), the USPTO may accept other documents as specimens. TMEP § 904.03(k).

2. Proper Specimens for Service Marks

A proper specimen for a service mark must show use of the mark in commerce in a manner that potential purchasers would perceive as identifying the applicant’s services and indicating their source. A proper specimen for a mark used with services may include material that either

(a) advertises or promotes the services, provided the specimen references the actual services (TMEP § 1301.04(a)); or

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(b) shows the mark as used in the course of rendering or performing the services (such a specimen need not specifically mention the services) (TMEP § 1301.04(b)).

Examples of Proper Specimens for Service Marks

1. Print material advertising or promoting the goods, such as newspaper or magazine ads, brochures, handbills, direct-mail leaflets, menus, etc. TMEP § 1301.04.

2. A photograph showing the rendering or performance of the services. See, e.g., TMEP § 1301.04(d) regarding entertainment services.

3. A website or other electronic display that references the services. TMEP § 904.03(i).

4. Letterheads, business cards, or invoices that create an association between the mark and the services rendered. TMEP § 1301.04(c).

3. Proper Specimens for Special Types of Marks

Certain kinds of marks have their own rules for what constitutes a proper specimen.

Proper Specimens for Special Types of Marks

Type of Mark General Rule

Color mark If color is a feature of the mark, or if the mark consists solely of color, the specimen must show such color(s). TMEP §§ 904.02(c)(ii), 1202.05(f).

Sound mark An applicant must submit a sufficient portion of the audio or video content to show the mark used in connection with the goods/services. TMEP § 904.03(f).

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Proper Specimens for Special Types of Marks

Motion mark The specimen should show the entire repetitive motion (e.g., a video clip or a series of still photos or screen shots). TMEP § 904.03(l).

Scent/flavor mark

The specimen should allow the examiner to smell the scent or taste the flavor to ensure that it matches the description of the mark and is actually being used in connection with the goods. Often, a proper specimen is the good itself. TMEP § 904.03(m).

Collective membership mark

The specimen must show use of the mark by members to show membership in the collective organization (e.g., a membership card or certificate). TMEP § 1304.08(e).

Collective mark The specimen must show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services. TMEP § 1303.02(b).

Certification mark

The specimen must show how a person other than the owner uses the mark to certify particular certified characteristics of that person’s goods or services. TMEP § 1306.06(b).

M. Verification and Signature

Each application must be verified and signed by the applicant or by someone who is authorized to verify facts on behalf of the applicant. TMEP § 804.04. The elements that must be included in the verification include the following (TMEP § 804.02):

(1) Truth of Facts Recited. A statement that, “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” 37 C.F.R. § 2.33(b)(1), (2); TMEP § 804.02.

(2) Use vs. Intent-to-Use. A statement that the applicant is using the mark in commerce (in an application under Section 1(a)) or has a bona

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fide intent to use the mark in commerce (in an application under Section 1(b) or Section 44) (see 15 U.S.C. §§ 1051(a)(3)(C), 1051(b)(3)(B), 1126(d)(2), 1126(e); 37 C.F.R. § 2.33(b)(1), (2); TMEP §§ 804.02, 901).

(3) Statement of Ownership and Entitlement to Use. A statement that the person believes the applicant to be the owner of the mark sought to be registered (in an application under Section 1(a)) or to be entitled to use the mark in commerce (in an application under Section 1(b) or Section 44) (see 15 U.S.C. §§ 1051(a)(3)(A), 1051(b)(3)(A); 37 C.F.R. § 2.33(b)(1), (2); TMEP § 804.02).

(4) Statement of Lack of Knowledge of Superior Rights. A statement that the person believes that no other person or entity has the right to use such mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of the other person, to cause confusion, or to cause mistake, or to deceive (see 15 U.S.C. §§ 1051(a)(3)(D), 1051(b)(3)(D); 37 C.F.R. § 2.33(b)(1), (2); TMEP § 804.02).

The verification may be in the form of an oath (see TMEP § 804.01(a) for the proper language of an oath) or a declaration (see TMEP § 804.01(b) for the proper language of a declaration).

Electronic applications make signing an application much easier. The USPTO accepts any characters that the applicant adopts as his or her signature between two forward slashes (e.g., /Andy Applicant/). TEAS includes a feature that allows the Administrator to create and fill in the form (except for the signature), validate the form, and then save it as an electronic file, which can be sent to the client for review and signature before the Administrator submits the application to the USPTO.

N. Payment of Fees

An application must include a filing fee for each class of goods or services. TMEP § 810. The current USPTO Fee Schedule is available on the USPTO website. The

Practice Tip

Signing an application on behalf of a client is almost always a mistake, because it makes the signatory a potential witness about the facts in the application.

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amount of the trademark application filing fee varies depending on whether the application is a paper application (the highest filing fee), a regular TEAS application (a lower filing fee), or a TEAS Plus application (the lowest filing fee). See 37 C.F.R. § 2.6(a)(1). If an applicant attempts to file a TEAS Plus application but later amends the application to disqualify the application from the TEAS Plus requirements, an additional fee will be required. TMEP § 810. Additional fees also are required if the application is amended to add one or more classes of goods or services. TMEP § 810.01. Only money paid by mistake or in excess may be refunded. TMEP § 810.02; TMEP § 405.04. An applicant that changes his or her mind about an application after its submission may not receive a refund. TMEP § 810.02. Fees may be paid by credit card, a USPTO deposit account, electronic funds transfer, check, or money order.

O. How to Correct Errors and Make Amendments

Can an applicant correct an error in the application after filing? The answer is, it depends on the error. An applicant may submit a preliminary amendment (available through TEAS) prior to the initial examination. An applicant must wait 7–10 days after submission of the original application to submit a voluntary amendment to the USPTO. While certain errors in the application are correctable, others are not and may even make the application void. The following table summarizes those errors that may be correctable and those that are not.

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Type of Error Correctable Errors Non-Correctable Errors

Error in identifying the applicant (TMEP § 1201.02(b)-(c))

1. Applicant mistakenly identified by a trade name or an operating division.

2. Minor clerical error or typo (e.g., missing word such as “Inc.” or a misspelling).

3. Inconsistent name and entity type (e.g., ABC, Inc., a Washington LLC).

4. Applicant legally changed name before filing the application but included the wrong name in the actual application.

5. The applicant is a partnership and incorrectly lists the partners’ names rather than the name of the partnership.

6. The party listed as the applicant did not exist as of the filing date.

1. An officer of a legal entity is listed as the applicant, instead of the entity applying.

2. The application was filed in the name of a predecessor in interest.

3. The application was filed in the name of a joint venturer when the mark is owned by the joint venture itself.

4. A sister corporation of the applicant actually owns the mark.

5. An application is filed in the name of a wholly owned subsidiary but the parent actually owns the mark.

Note: Each of the non-correctable errors listed above makes the application void.

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Type of Error Correctable Errors Non-Correctable Errors

Error related to the mark itself (drawing or description) (TMEP § 807.14)

An applicant may amend the drawing or description of the mark only if (a) the specimen submitted matches the amendment and (b) the amendment does not materially alter the mark.

An applicant cannot amend the drawing or description of the mark itself if the specimen submitted does not match the amendment or the amendment results in a material alteration (i.e., creates a different commercial impression).

Error in the identification of goods/services (TMEP §1402.07)

An applicant may amend the identification of goods or services only if the amended identification is narrower in scope than the original identification of goods or services.

An applicant cannot amend the identification of goods or services if the amended identification is outside the scope of (i.e., is broader than) the original identification of goods or services.

Error in the classification

An applicant may correct an error in the classification by adding or changing a class.

An applicant cannot amend the classification to a class that does not fit the goods or services.

Errors in the dates of first use

An applicant generally may amend dates of first use if supported by a declaration.

A Section 1(a) applicant cannot amend to a date of use that is later than the application filing date.

Error in the specimens

An applicant generally may add a specimen or replace a specimen already of record.

An applicant cannot amend to add a specimen that does not match the drawing.

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Type of Error Correctable Errors Non-Correctable Errors

Error in the filing basis (TMEP § 806.03)

An applicant may add or substitute a filing basis before publication provided the applicant meets all requirements for the new basis. A basis also may be deleted.

An applicant cannot add or substitute a filing basis if the application does not meet the requirements for the new basis.

Other errors Most other information in an application may be added or corrected (e.g., additional statements such as disclaimers, prior registrations, translations, acquired distinctiveness claims).

P. Petition to Make Special

The USPTO generally examines applications in the order in which they are received. However, an applicant may submit a “petition to make special” to request that the initial examination of the application be advanced out of its regular order. TMEP § 1710. A petition to make special must be accompanied by (1) the correct fee, (2) an explanation of why special action is requested, and (3) a statement of facts that shows that special action is justified. A petition to make special is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. TMEP § 1710.01.

V. Federal Trademark Prosecution

Once an application is on file, the role of the Administrator and the lawyer shifts to taking those steps necessary to prosecute the application successfully through to registration. Successful prosecution of a trademark application requires a

Practice Tip

A petition to make special is a very useful tool to expedite an application in certain circumstances, such as when there is actual or threatened infringement of a mark, pending litigation, or the need for an expedited registration to secure a foreign registration.

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thorough knowledge of the detailed processes, potential pitfalls, and practical strategies involved. The most critical responsibilities of an Administrator are to keep accurate records and to docket deadlines. The lawyer and the Administrator work together to address and respond to any issues that may arise, such as procedural or substantive office actions by the USPTO or oppositions by third parties. Below is an overview of the most important steps in, and potential problems that might arise during, prosecution.

A. Due Diligence and Docketing

A fundamental part of trademark prosecution is recording and tracking the status of an application and performing the due diligence necessary to obtain a registration. Below is an overview of required and recommended due diligence and docketing procedures.

1. Due Diligence

Trademark applicants and practitioners must keep themselves informed of their matters pending before the USPTO. TMEP § 1705.05. Performing due diligence not only fulfills a legal obligation under the rules but also serves an important practical and strategic benefit.

Under the rules, an applicant or registrant is considered to have been diligent if the applicant or registrant checks the status of the application or registration every six months. 37 C.F.R. § 2.146(i). A party who has not received notice of an expected action by the USPTO is required to inquire as to the cause of the delay and request corrective action in writing where necessary. TMEP § 1705.05. Also, an applicant or registrant who learns of a problem must take corrective action promptly in writing. Id.

Diligently tracking the status of an application or registration also provides the practical benefit of avoiding abandonment, cancellation, or expiration. A practitioner who is aware of the status of an application or registration will be better informed to know how and when to respond to actions or events that pose a threat to registration itself or to the scope of one’s rights protected through a registration. For example, an applicant who learns of an office action (e.g., a

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Section 2(d) refusal) earlier rather than later will have more time and possibly a greater opportunity to take corrective action (e.g., a coexistence agreement) to overcome any obstacles to registration.

The easiest way to track the status of an application is through the Trademark Status and Document Retrieval (TSDR) system, implemented in 2012. TSDR may be accessed at tsdr.uspto.gov or through the links available in a search using the Trademark Electronic Search System (TESS). TSDR provides all electronically available information and documents for any application or registration, including information about (1) current status, (2) the mark itself, (3) the goods and services covered, (4) the filing basis, (5) the owner, (6) the lawyer/correspondent, (7) prosecution history, (8) maintenance filings and post-registration matters, and (9) USPTO staff and location. TSDR offers the most complete electronic information available for an application or registration in a single location.

Status inquiries also may be made by telephone through the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. The USPTO discourages written status inquiries because they may delay the processing of the application or registration.

Exercising due diligence after an application is on file and throughout the trademark prosecution process should go beyond the minimum requirements. The following checklist provides the key due diligence functions of an Administrator after an application is on file.

Step Key Functions of Administrator During Prosecution and After Registration

1. Create a complete and accurate docketing entry with application details (serial number, filing date, etc.). (See Section V.A.2.b, below, for a list of what to include in a docketing record.)

2. Diligently monitor the application status through a regular review of TSDR and update the docketing record with all correspondence received from the USPTO.

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Step Key Functions of Administrator During Prosecution and After Registration

3. Review all official communications received (filing receipts, office action, notice of publication, notice of allowance, etc.) and provide the lawyer with a summary of these communications.

4. Assist the lawyer with preparing office action responses or other correspondence to the USPTO, including compiling any exhibits or other evidence referenced in the response or required by the examiner.

5. Coordinate with the client well in advance of deadlines to obtain additional information necessary for submission to the USPTO and signature of any documents or verifications necessary during prosecution.

6. For Section 1(b) applications, closely monitor (a) deadlines for filing the allegation of use or any request for extension and (b) the occurrence of actual use, to ensure timely and prompt filing of the allegation of use.

7. Upon registration, advise the lawyer of receipt of the certificate of registration and docket all applicable deadlines calculated from registration (e.g., deadline for filing Section 8 affidavit, Section 15 affidavit, etc.).

8. Prepare transmittal letter to client to forward the certificate of registration, along with an explanation of the certificate and the future maintenance requirements.

9. Update the prosecution file history with a copy of the registration and maintain an accurate registration file for the mark (e.g., evidence of continued use, Sections 8 and 15 affidavit, Section 9 renewal with Section 8 affidavit).

10. Monitor the status of the registration at least every six months and maintain an accurate and complete trademark docketing record for the registration.

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2. Docketing

a. What Is Docketing and Why Is It Important?

Trademark docketing is the process of recording and tracking the history and status of a trademark and any actions necessary to maintain a trademark application or registration throughout the life of a mark. Docketing is the most important role of an Administrator.

The importance of accuracy in trademark docketing cannot be understated. A deadline missed because of inaccurate or incomplete data entry could result in an application’s being refused registration or the cancellation of a registration. Data entry in a docketing system can be monotonous. Therefore, an Administrator must stay focused to ensure that dates and other information are entered correctly.

b. What Information Should Be Docketed?

A new trademark docketing record should be created and tracked as soon as a new trademark is adopted or an intent-to-use application is filed with the USPTO. A thorough trademark docketing record might contain the following information about the trademark at any given time:

Item Detail

The Mark An image of the mark; a description of the mark; specimen.

Mark Owner Name, address, contact person, email, telephone, fax.

Serial Number The application serial number.

Registration Number The registration number (if a registration has issued).

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Item Detail

Filing Basis Basis for filing application—Section 1(a), 1(b), 44(d), 44(e), or 66(a).

Country For Section 1(a) or 1(b) applications, the United States.

For Section 44(d) or 44(e) applications, the country of the application or registration on which the Section 44 application is based.

For Section 66(a), applications, the countries (or international bodies, e.g., the EU) in which extension of protection is sought.

Goods and Services A complete list of goods/services (and the class for each) with which the mark is actually used and/or intended to be used.

Designated Status A description of the status of the application/ registration, such as one of the following: pending, suspended, published, opposed, allowed, abandoned, expired, or cancelled.

Dates of First Use Date of first use anywhere and date of first use in interstate commerce.

Application Date The date the application was filed.

Date of Office Action The date the examining attorney issued an office action.

Deadline for Responding to an Office Action

Six months after the examining attorney issued an office action (also note two-month deadline for priority actions).

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Item Detail

Approval for Publication

The date the application was approved for publication.

Publication Date The date the application was published for opposition.

End of Opposition Period

The date the period to oppose the application ended.

Notice of Allowance For an ITU application, the date the USPTO issued a notice of allowance.

Deadline(s) for Filing Use Allegation

For an ITU application, the date by which the applicant must file an allegation of use, an amendment to allege use, or a request for extension of time to file an allegation of use (first, second, third, fourth, or fifth).

Registration Date The date the registration issued.

Deadline for Filing Declaration of Use

The deadline for filing a Section 8 declaration of use or excusable non-use (between the fifth and sixth years after registration).

End of Grace Period for Filing Declaration of Use

Six months after the deadline for filing a Section 8 declaration of use or excusable non-use.

Date for Filing Declaration of Incontestability

The deadline for filing a Section 15 declaration of incontestability (within one year after the end of any five-year period of continuous use following registration).

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Item Detail

Renewal Deadline Deadline for filing a combined declaration of use or excusable non-use (Section 8) and application for renewal (Section 9) (between the ninth and tenth years after registration and between every ninth and tenth year thereafter).

End of Grace Period for Renewal

Six months after the deadline for filing a combined declaration of use or excusable non-use (Section 8) and application for renewal (Section 9).

Date of Abandonment, Cancellation, or Expiration

The date the application or registration was abandoned, was cancelled, or expired.

c. Docketing System

Every trademark practitioner should have a good docketing system and someone to manage and operate that system. In an office that manages a relatively small trademark portfolio, an Administrator may perform certain docketing and maintenance functions through the use of a simple docketing system, such as a spreadsheet, a word-processing document, a calendaring system, a manual card file, or some combination of these. For companies and law firms handling larger or more sophisticated trademark portfolios, professional docketing software likely is necessary to perform due diligence and meet deadlines.

Numerous professional trademark docketing platforms are available on the market. Many of these docketing systems overlap with the docketing functions for patents and other forms of intellectual property. Several of these systems are now available online, allowing users to access and update records from anywhere with Internet access. Some of these docketing systems include managed docketing services for companies and law firms. Some of the most popular platforms currently on the market today are the following (in no particular order):

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Professional Docketing and Trademark Management Platforms

www.ippo.com

www.computerpackages.com

www.pattsy.com

www.lecorpio.com

www.anaqua.com

www.cardinal-ip.com

www.appcoll.com

www.ipss.com

www.gsi-office.de

www.patrix.com

www.legalstar.com

www.flextrac.com

www.dockettrak.com

www.tmcloud.com

www.marktend.com

Because the quality and functionality of docketing software vary widely, a firm or office should weigh carefully the necessary features of the platform that best fits its portfolio and practice. The following is a list of factors to consider in choosing trademark docketing software.

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Considerations in Selecting a Trademark Docketing Software Platform

1. Cost (varies widely, usually depending primarily on the number of users and portfolio size).

2. The ease with which users can input, update, access, and download trademark records.

3. How easily records can be imported from or exported to another platform.

4. How many records the system can handle and remain stable (i.e., the capacity of the back-end database).

5. Integration with USPTO (and international) records and databases.

6. Whether the platform is Web based or must be installed locally.

7. The platform’s reporting functionality and other tools available to search and extract data.

8. Whether (and which) deadlines are calculated automatically and what jurisdictions are available.

9. What warning protocols are available for deadlines and other events (e.g., email).

10. Maintenance requirements, frequency of software updates, and help-desk availability.

d. Docketing Reports

Docketing reports can be an effective way to manage the prosecution process. Knowing the status of each application and registration for a particular client at any given time not only is useful but can help the client and lawyer develop a better trademark strategy.

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While many practitioners prepare their own customized reports on behalf of clients, some docketing systems include useful reporting features. Regardless of how reports are prepared, sharing these reports with a client will help keep the client updated on the status of each application and registration and avoid last-minute surprises.

B. Examination Procedure

After the USPTO determines that an applicant has met the necessary filing requirements, it assigns a serial number to each application. About three months after an application is filed, the USPTO assigns an examining attorney to examine the application.

The examiner is responsible for ensuring that the application complies with all of the requirements imposed by the applicable statutes, regulations, and rules. In fulfilling that responsibility, he or she may raise a number of procedural and substantive issues relevant to the application. The examiner typically will raise these issues by means of an office action, a priority action, or an examiner’s amendment. In many cases, an examiner may refuse registration altogether based on the applicant’s failure to correct what the examiner views as procedural or substantive defects in the application. Often, an applicant may overcome these refusals either by amending the application itself or by submitting evidence and arguments as to why the USPTO should not refuse registration on the grounds asserted by the examiner.

The following provides an overview of the most likely procedural and substantive refusals that an application may face during the examination process.

C. Procedural Refusals

An examiner may issue an office action containing any number of what practitioners call “procedural refusals.” Such refusals are “procedural” in the sense that they typically involve a refusal on the basis of incomplete or inaccurate information in the application itself, which an applicant usually may correct by

Practice Tip

At least once a year, prepare and maintain a yearly docket of all deadlines for each trademark record, such as statements of use, renewals, Sections 8 and 15 affidavits, etc.

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filing an amendment to the application. The following is a non-exhaustive list of procedural refusals that applicants may face during the examination process, followed by a more detailed explanation of some of the most common procedural refusals.

Procedural Refusal Governing Rule

Missing or incorrect information about the applicant TMEP § 803

Missing or incomplete verification and/or signature TMEP § 804

Missing or incorrect filing basis TMEP § 806

Drawing shows more than one mark TMEP § 807.01

Drawing contains extraneous material TMEP § 807.02

Claim of standard character mark does not match drawing

TMEP § 807.03

Claim of color does not match drawing TMEP § 807.07

Drawing shows incomplete (or a mutilation of) mark TMEP § 807.12(d)

Missing or inaccurate description of mark TMEP § 808

Missing or inaccurate translation or transliteration of mark

TMEP § 809

Inquiry regarding use in commerce TMEP § 901.04

Defect in statement of dates of first use TMEP § 903

Defect in the specimen TMEP § 904

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Procedural Refusal Governing Rule

Wrong international classification of goods and services TMEP §§ 1401.03, 1401.05

Improper use of identical language in more than one class

TMEP § 1401.07

Overly broad identification of goods or services TMEP § 1402.03

Inaccurate identification of goods or services TMEP § 1402.05

Indefinite identification of goods or services TMEP § 1402.07

Improper use of third-party mark in identification of goods or services

TMEP § 1402.09

Omission of additional required classification of goods and services

TMEP §§ 1403.01, 1403.02

1. Improper Identification of Goods and Services

It is common for an examiner to request clarification of goods or services because they are indefinite or ambiguous. See TMEP § 1402.07. Further, often an examiner will refuse registration on the ground that the identification is overly broad. TMEP § 1402.03. An applicant often can overcome these refusals by amending the identification of goods or services to describe only the precise goods and services in connection with which the mark is used.

A proper identification should be appropriately narrow to avoid refusals and third-party conflicts but sufficiently broad to maximize the scope of protection of one’s registered trademark rights. Following are some examples of proper and improper identifications of goods and services.

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Improper Identification Proper Identification

Healthy food Fresh fruit, fresh vegetables

Metallic parts Metal drive gears for machines

Accessories for iPhones Accessories for mobile phone devices, namely, cases and covers

Lawn mowing services and T-shirts and hats for advertising lawn mowing services

Lawn mowing services (T-shirts and hats are collateral)

Sale of T-shirts, hats, and other apparel

T-shirts, hats, socks, shoes (goods) or

Retail store services featuring T-shirts, hats, socks, shoes (services)

Consulting services Consulting in the field of telecommunications technology

Installation and repair of computer systems

Installation and repair of computer hardware systems or

Installation and repair of computer software systems

Recorded musical performance Live musical performance (service) or

DVDs featuring musical performances (goods)

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2. Wrong International Class

Examiners commonly suggest, and may even require, that applicants amend the application to add or modify the international classification of the goods and/or services covered by the registration. If the applicant has selected an incorrect international classification, the examiner will require an amendment to correct the classification. TMEP §§ 1401.03, 1401.05. More often, an examiner will require an applicant to add one or more additional international classifications to the application so that the application more accurately categorizes the goods and/or services. TMEP §§ 1403.01, 1403.02.

It may be necessary to contest an examiner’s requirement that the applicant classify the goods or services in a new or different international class. For example, an applicant may want a registration in a specific class to reduce the risk of a potential conflict with a third-party registrant. Further, an applicant already may have a registration in a particular class and may be seeking to expand the scope of its rights by obtaining a registration in a different class; or the applicant simply may be trying to save on costs by squeezing a broader identification of goods and services into a single class. Regardless of the reason, the classification of goods and services must be accurate. See Section IV.H, above, for tips on how to identify the proper class for a mark.

3. Description of the Mark

An examiner will issue an office action if the description of a non-standard character mark is either incomplete or inaccurate. Any change to the description must be accurate and concise and may not cause a material alteration to the mark. TMEP §§ 808.02; 808.03(e). See Section IV.E.2, above, for examples of how to craft a proper description of a mark.

Practice Tip

To try to overcome the requirement of a new or different class, an applicant can (a) point to similar goods similarly classified in the ID Manual; (b) identify third-party registrations that classify the particular goods or services in the same class; or (c) explain exactly why the applicant’s proposed classification meets the criteria used by the USPTO to classify goods and services (see TMEP §§ 1401.02(a), 1401.05).

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An applicant may not want to describe the mark in the manner stated by the examiner. The narrower the description, the more easily the mark may be distinguished from other marks. The broader the description, the more opportunity there is to argue that it is similar to another mark. This principle is particularly true in the context of trade dress, where the elements of the trade dress weigh heavily in the likelihood-of-confusion analysis. Thus, an applicant should take great care in drafting a description of a mark and in responding to an examiner’s request for an amendment of the description.

4. Meaning and Translation of a Mark

If it is unclear to the examiner whether a term in a mark has a particular meaning in the relevant industry, he or she will inquire of the applicant whether the term has such meaning. TMEP § 808.01(a). Furthermore, if the mark includes non-English wording and/or non-Latin characters, the examiner will require a translation and/or a transliteration of such wording or characters. TMEP § 809.

There are potential traps in providing the meaning or translation of a term in a mark. Often, an examiner may use the meaning or translation of a term in a mark to refuse registration or require a disclaimer on the ground that such term is merely descriptive of or the generic name for the goods and services. Some terms have more than one meaning or translation (particularly in different languages), which can lead to disputes regarding whether a particular term or the mark as a whole may be registered. While an applicant should be candid in providing an accurate meaning and translation of terms in a mark, he or she should be aware of information that could result in a substantive refusal (see below).

5. Improper Specimen of Use

Often, examining attorneys issue a procedural refusal for failure to submit a proper specimen showing use of the mark in commerce for each class. TMEP § 904. Below are some of the common mistakes that applicants make in submitting specimens, which likely will result in an office action.

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Problem with Specimen Examples of Bad Specimens

The specimen shows only the mark, without reference to the goods or services being offered or sold in commerce.

Business cards, letterheads, an image of the mark that is not a specimen

The specimen’s primary function is to provide information about or promote the sale of the goods.

Advertising, brochures, press releases, invoices, price lists

The specimen is an electronic display associated with the goods that does not show the mark as used with the sale of the goods.

A website that has no information on how to order the goods

The specimen does not show matter that functions as a mark (i.e., it does not serve to identify and distinguish the source of the goods or services).

Model numbers, names of authors, use as a domain name, etc.

The specimen does not show the mark as it appears in the drawing.

The specimen does not show the same punctuation as the drawing

The specimen shows a mere ornamental use of the mark.

A T-shirt with the mark prominently displayed on the front (not on label)

The specimen shows use only as a trade name and not as a mark.

Product label that states, “Manufactured by ABC, Inc.”

Although these mistakes may be correctable, often they are signals to an examiner of a more fundamental problem with an application to register a mark—for example, that the mark is not actually in use in commerce or that the applied-for mark does not actually function as a mark. Therefore, a prudent

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practitioner will select a proper specimen, to avoid further procedural or substantive refusals.

D. Substantive Refusals

An examiner also may refuse registration altogether based on a substantive defect in the application itself or a conflict with the rights of a prior registrant. These refusals often are referred to as “substantive refusals” because they involve the subject matter of the registration, and typically cannot be overcome by a mere amendment to the application. Chapter 1200 of the TMEP is the key chapter governing substantive examination of applications.

Responding to substantive refusals generally requires crafting legal arguments and presenting evidence, and therefore should involve the lawyer. Nonetheless, responding to any office action is a collaborative effort among the lawyer, the Administrator, and the client. The Administrator plays a major role in avoiding costly mistakes by reviewing responses for errors or omissions.

The following is a non-exhaustive list of possible substantive refusals that an examining attorney might raise, followed by a more detailed explanation of the most common substantive refusals.

Substantive Refusal Governing Rule

Application filed in name of incorrect party TMEP § 1201.02(b)

Use of mark not by applicant or “related company” TMEP §§ 1201.01, 1201.03

Mark is used solely as a trade name TMEP § 1202.01

Trade dress is functional and does not serve as a mark

TMEP § 1202.02(a)

Trade dress is not inherently distinctive TMEP § 1202.02(b)

Mark constitutes mere ornamentation TMEP § 1202.03

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Substantive Refusal Governing Rule

Mark is merely informational or laudatory TMEP § 1202.04

Color mark has not acquired distinctiveness, is functional, or is not an element separable from the mark

TMEP § 1202.05

Trademark is not used with “goods in trade” TMEP § 1202.06

Mark is merely a title of a single creative work and not a series

TMEP § 1202.08

Mark consists merely of the name or pseudonym of an artist or author

TMEP § 1202.09

Mark merely identifies a character in a creative work

TMEP § 1202.10

Mark consists of common geometric shapes or background designs

TMEP § 1202.11

Mark is merely a model or grade designation TMEP § 1202.16

Mark is immoral or scandalous TMEP § 1203.01

Mark is deceptive or contains deceptive material TMEP § 1203.02

Mark may disparage, falsely suggest a connection with, or bring into contempt or disrepute persons, institutions, beliefs, or national symbols

TMEP § 1203.03

Mark consists of or comprises the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation

TMEP § 1204

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Substantive Refusal Governing Rule

Mark contains matter protected by statute or convention (e.g., Red Cross)

TMEP § 1205

Mark consists of name, portrait, or signature of a living person, without his or her consent

TMEP § 1206

Mark is likely to cause confusion with another mark

TMEP § 1207

Mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services (and has not acquired distinctiveness)

TMEP § 1209.01(b)

Mark is the generic name of the goods or services with which it is used

TMEP § 1209.01(c)

Mark is deceptively misdescriptive (and has not acquired distinctiveness)

TMEP § 1209.04

Mark is primarily geographically descriptive TMEP § 1210.01(a)

Mark is primarily geographically deceptive (or primarily geographically deceptively misdescriptive)

TMEP §§ 1210.01(b)-(c), 1210.05

Mark is primarily merely a surname TMEP § 1211

Application fails to disclaim an unregistrable component of the mark

TMEP § 1213

Application seeks registration of a changing or “phantom” element (e.g., “Tourist’s Guide to [Fill in Name of City]”)

TMEP § 1214

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Substantive Refusal Governing Rule

Mark consists merely of a domain name not used as a mark

TMEP § 1215

1. Failure to Function as a Mark

The most basic of all refusals to register a mark is that the mark does not function as a mark—that is, it does not act to identify and distinguish the source of goods or services in commerce. Examiners will refuse registration of applied-for marks that are generic or serve some purpose other than acting as a trademark, such as a trade name, an ornamental design, or a laudatory phrase. A few examples, discussed below, demonstrate how an applicant might avoid or otherwise overcome this type of substantive refusal.

a. Genericness

An examiner may issue an office action refusing registration of a term that he or she views as generic for goods or services offered or sold under the mark. Generic marks cannot be registered on the Principal Register or the Supplemental Register. To overcome a genericness refusal, an applicant must establish that the primary meaning of the mark in the minds of consumers is not the generic thing (i.e., the dictionary definition) represented by the mark, but rather a brand that identifies and distinguishes the source of the goods or services. TMEP § 1209.01(c). For example, after a refusal, the mark COUNTRY MUSIC ASSOCIATION ultimately was determined not to be generic, even though it was used with association services that promoted country music, because consumers recognized that mark as a brand and not as a generic phrase. See In re Country Music Association, Inc., Serial Nos. 78906900 and 78901341 (T.T.A.B. Oct. 25, 2011).

Practice Tip

A genericness refusal sometimes may be overcome by conceding that a mark is descriptive (not generic) but then providing evidence that the mark has acquired distinctiveness.

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b. Trade Name

An examiner may refuse registration if he or she believes that the mark is merely a trade name that functions only to identify the business entity and does not identify and distinguish the source or origin of the goods and services. To overcome this kind of refusal, an applicant can present evidence that the mark acts as both a trade name and a trademark.

c. Mere Ornamentation

Applicants also may face a refusal if the examiner perceives the mark as a mere decorative feature that does not function as a mark. TMEP § 1202.03. An examiner will consider the size, location, and dominance of a proposed mark to determine whether it serves a trademark function. TMEP § 1202.03(a). This refusal often arises when the specimen shows a large rendition of the mark emblazoned on the goods themselves rather than on packaging or a tag. Even small, neat, and discrete design features may be considered ornamental if they do not function as marks. Therefore, an applicant must be prepared to show that the mark functions as a mark rather than as a decorative emblem.

d. Informational or Laudatory Phrases

Common information or laudatory phrases also will be rejected by examiners as not functioning as marks. Laudatory terms are those that generally are used to bolster and are viewed as puffery or merely descriptive. Terms that are merely laudatory (e.g., “Best Salsa”) or common in everyday usage (e.g., “Drive Safely”) will not qualify for registration. TMEP § 1202.04. When faced with such a refusal, an applicant has the burden of establishing that the mark goes beyond mere bolstering or providing information about the goods or services and instead actually functions as a mark. The less common the word or phrase, the more likely it is that the applicant will be able to overcome such a refusal.

Practice Tip

A trade name refusal can sometimes be avoided by not submitting a specimen that primarily shows use of the mark as a trade name (e.g., a letterhead).

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2. Mere Descriptiveness—Section 2(e)(1)

One of the most common substantive refusals is that a mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services. TMEP § 1209.01(b). While generic marks cannot be registered, descriptive marks may be registered if they have acquired distinctiveness, and suggestive marks may be registered without a showing of acquired distinctiveness. An examiner will issue a mere descriptiveness refusal when he or she believes that the applied-for mark merely describes some aspect of the goods or services. For example, the mark SWEET CANDY for sugar-based confections likely would be refused registration because the term SWEET is merely descriptive and the word CANDY is generic. A determination of mere descriptiveness must be made in relation to the goods or services to which the mark is applied, not in the abstract.

In responding to such a refusal, an applicant has two options: (a) demonstrate that the mark is at least suggestive rather than descriptive as applied to the particular goods or services; and/or (b) establish that, even if the mark is descriptive, it has acquired distinctiveness, also known as “secondary meaning.” These options are not mutually exclusive. An applicant can (and often should) argue secondary meaning in the alternative to an argument that a mark is not merely descriptive.

a. The Mark Is Suggestive

To establish that a mark is not descriptive, an applicant should try to show that (1) the mark does not directly and immediately describe any particular feature of the goods or services and (2) the mark requires at least some imagination or thought to glean its meaning. Examiners often reject arguments that other, similar marks were registered without a finding of mere descriptiveness. TMEP § 1209.03(a). However, third-party registrations (particularly more recent ones) provide persuasive support for overcoming a mere descriptiveness refusal. The fact that a term is not found in a dictionary or has more than one meaning is not controlling. TMEP § 1209.03(b), (e). However, if the mark combines incongruous terms that would otherwise be descriptive by themselves, or creates a double

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entendre, it is less likely to be deemed merely descriptive. TMEP §§ 1209.03(d), 1213.05(c).

b. The Mark Has Acquired Distinctiveness

The other option in overcoming a mere descriptiveness refusal is to establish acquired distinctiveness under Section 2(f). See TMEP § 1212. A mark acquires significance when its primary meaning in the minds of consumers is no longer the thing that the mark describes but rather the source of the goods or services with which the mark is used. There are three basic types of evidence that can be used to establish acquired distinctiveness: (1) ownership of a prior registration for related goods or services (TMEP § 1212.04); (2) evidence of substantially exclusive and continuous use in commerce for five years (TMEP § 1212.05); and (3) actual evidence of acquired distinctiveness, such as advertising and sales expenditures, affidavits of consumers or sellers, surveys or other market research, and/or intentional copying by third parties (TMEP § 1212.06).

3. Deceptive Misdescriptiveness—Section 2(e)(1)

An examiner also will refuse registration if the mark falsely describes some particular feature or aspect of the goods or services. TMEP § 1209.04. A deceptively misdescriptive mark may be registered upon a showing of acquired distinctiveness unless the misdescription is deemed material to consumers’ decision to purchase the goods or services. TMEP § 1203.02.

The mark SEPTEMBER 11, 2001 was found deceptively misdescriptive of books that did not cover the terrorist attacks of September 11, 2001. In re Moti Shniberg, Serial No. 78083495 (T.T.A.B. Apr. 6, 2006). Likewise, the term LOVEE LAMB was held deceptively misdescriptive of seat covers not made of lambskin. In re Budge Manufacturing Co., 857 F.2d 773, 775 (Fed. Cir. 1988).

To overcome this type of refusal, an applicant must demonstrate that consumers are not likely to be deceived by the alleged misrepresentation in the mark. The mere possibility that someone might receive the wrong impression from a mark is not sufficient to support a refusal. The mark must be deceptive as applied to the goods or services, not deceptive in the abstract. The fact that other representations or markings used with the mark reveal the true nature of the

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goods or services does not preclude a finding of deceptive misdescriptiveness. See TMEP § 1209.04.

4. Primarily Merely a Surname—Section 2(e)(4)

An examiner also will refuse registration if the primary significance of the mark in the minds of consumers is that of a surname. A mark that is primarily merely a surname may still be registered by showing that the mark has acquired distinctiveness. The TTAB has developed five factors to determine whether a mark is primarily merely a surname: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether the term has the “look and feel” of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Management GmbH, Serial No. 74/340080, 37 U.S.P.Q.2d 1332, 1333-34 (T.T.A.B. Sept. 13, 1995).

An applicant can overcome a refusal by presenting supporting evidence and arguments for each of the factors listed above. For example, an applicant can submit evidence from a phone book or from a census to show that a surname is rare (the U.S. Census Bureau provides a database containing information about the rarity of surnames). See TMEP § 1211.01(b)(i)-(iii). Also, an applicant can submit evidence that the mark has an ordinary meaning apart from its surname significance. TMEP § 1211.01(a)(i). An applicant who receives such a refusal also should submit available evidence that the mark conveys other impressions apart from that of a surname, such as geographical significance (TMEP § 1211.01(a)(iii)) or significance as a famous place or person (TMEP § 1211.01(a)(iv)). Generally, marks with two surnames together or marks that have initials or given names before the surname are not considered to be primarily merely a surname. TMEP § 1211.01(b)(ii)-(iii).

5. Likelihood of Confusion—Section 2(d)

Perhaps the most common type of refusal is that the applied-for mark is likely to cause confusion with a previously registered mark. TMEP § 1207. To determine whether there is a likelihood of confusion, the USPTO, the TTAB, and the Federal

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Circuit apply the same set of factors, known as the DuPont factors, which were outlined in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). While examiners typically focus only on the first two factors, an applicant can and should submit arguments and evidence pertaining to any relevant DuPont factor.

The DuPont Factors

1. The similarity or dissimilarity of the marks. TMEP § 1207.01(b). Marks are to be compared in their entireties as to their appearance, sound, connotation, meaning, and overall commercial impression. Dominant elements of marks weigh more heavily in making comparisons.

2. The similarity or dissimilarity and nature of the goods or services. TMEP § 1207.01(a). Even identical marks may not be likely to cause confusion if used for different goods or services. The examiner will consider only the goods and services identified in the application or registration, not those actually offered or sold.

3. The similarity or dissimilarity of established, likely-to-continue trade channels. If the goods or services are not marketed or sold in the same trade channels, then confusion is less likely to occur.

4. The conditions under which, and the buyers to whom, sales are made. TMEP § 1207.01(d)(vii). The greater the care exercised by consumers, the more sophisticated the consumers, and the more expensive the goods or services, the less likely it is that consumers will be confused.

5. The fame of the prior mark. The more famous a registered mark is, the more likely it is that a subsequent user’s use of the mark will draw on the goodwill of the registered mark and be confusing to consumers.

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The DuPont Factors

6. The number and nature of similar marks in use on similar goods. TMEP § 1207.01(d)(iii). Evidence of actual use or registration of similar marks by third parties is evidence that the similar portion of the mark is descr iptive or so commonly used that consumers will look to other elements to distinguish the marks.

7. The nature and extent of any actual confusion. TMEP § 1207.01(d)(ii). Evidence of instances of actual confusion is strong evidence of a likelihood of confusion, while the absence of evidence of actual confusion generally does not weigh significantly in favor of an applicant.

8. The length of time that, and the conditions under which, there has been concurrent use without evidence of actual confusion. If marks have been used in overlapping markets for a significant period of time without any actual confusion (or de minimis instances of actual confusion), such evidence supports a finding of no likelihood of confusion.

9. The variety of goods on which a mark is or is not used. If a mark is used only with a specific type of good or service (rather than with multiple kinds of goods or services), consumers are less likely to believe that a different type of good or service sold under a similar mark comes from the same business.

10. The market interface between the applicant and the registrant. Prior or current interaction between the two mark owners, including agreed-to coexistence, may demonstrate no likelihood of confusion.

11. The extent to which the applicant has a right to exclude others from use of its mark. If the applicant has a longstanding and well-known mark (i.e., common-law rights), confusion is less likely.

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The DuPont Factors

12. The extent of potential confusion. If the practical effect of any confusion is de minimis because of how consumers will react to the marks, there may be no likelihood of confusion.

13. Any other established fact probative of the effect of use. Applicants might consider other factors, including those applied in other jurisdictions, such as good-faith intent in adopting the mark.

In making arguments under these factors, it is important to remember that doubts generally are resolved in favor of the registrant. TMEP § 1207.01(d)(i). Nonetheless, an applicant faced with a refusal should consider all available arguments and evidence to distinguish the applied-for mark and its use from that of the registered mark cited by the examining attorney. An applicant also should consider the long-term effects of arguments submitted to the USPTO, which are a matter of public record and may be used by opponents of the applicant in the course of later disputes.

Rather than assert arguments against a likelihood-of-confusion refusal, an applicant may seek cancellation of the prior registration in an inter partes cancellation proceeding based on priority of use, abandonment, fraud, or any other legitimate grounds to cancel a registration. If the examiner finds that the mark may be likely to cause confusion with a mark that is the subject of a prior-filed application (not yet registered), the applicant can still assert arguments against the potential citation or even file an opposition against the other application. TMEP § 1208.

An applicant also may seek the consent of the prior registrant. Although a mere “naked consent” generally will be insufficient to overcome a likelihood-of-confusion refusal, a substantive agreement setting forth the reasons why the parties believe there is no likelihood of confusion generally will be sufficient to overcome such a refusal. TMEP § 1207.01(d)(viii). However, contacting the owner of the prior registration can be extremely risky, because it could provoke a fight with that owner.

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6. Disclaimer

An examiner may refuse to register a mark if the applicant fails to “disclaim” matter in the mark that the examining attorney considers unregistrable, even though the mark as a whole is registrable. TMEP § 1213. Disclaimed elements of a mark generally include terms that are generic, descriptive, or deceptively misdescriptive or that otherwise do not function as a mark (e.g., trade names, mere domain names). For example, an applicant for the mark JOE’S FAMILY RESTAURANT likely would be required to disclaim the term “family restaurant.” A disclaimer is a concession that the applicant does not own or have exclusive rights to the disclaimed elements in a mark. Not every element of a mark may be disclaimed; otherwise, the entire mark would be unregistrable. TMEP § 1213.06.

Although agreeing to a disclaimer often may be the best way to obtain a registration, an applicant may have good reasons for contesting an examiner’s requirement of a disclaimer. For example, an applicant may believe—and may try to convince the examiner—that the term in question is not generic or merely descriptive. If an applicant can establish that the portion of the mark at issue is inherently distinctive or has acquired distinctiveness, then no disclaimer is necessary. A claim of acquired distinctiveness in part is known as a claim of Section 2(f) “in part.” TMEP § 1212.02(f). The same rules that apply to claims of acquired distinctiveness under Section 2(f) as to the entire mark, outlined above, also apply to claims of acquired distinctiveness of a portion of a mark.

An applicant also might be able to overcome a disclaimer requirement by showing that the mark as a whole is a unitary mark. A unitary mark is one in which the elements of the mark together have meaning and cannot be divided and regarded as separate elements. TMEP § 1213.05. A mark that creates a double entendre—a word or expression capable of more than one interpretation—does not require a disclaimer because it is by definition unitary, in that all portions of the mark are necessary to create the double

Practice Tip

Unless the requirement of a disclaimer is obvious, it is usually a good idea not to volunteer a disclaimer in the initial application and instead wait to see what position the examiner will take.

Practice Tip

Another way to avoid a disclaimer requirement is to telescope or hyphenate the terms in the mark (e.g., BOOKCHOICE or TIRE-X). TMEP § 1213.06(b)-(c).

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entendre. Similarly, the combination of incongruous terms also creates a unitary mark. Following are examples of unitary marks:

a. GONE TO THE DOGS, for a dog walking service

b. NO BONES ABOUT IT, for precooked ham

c. URBAN SAFARI, for city tours

E. Communications with the Trademark Office

Once an application is on file, an applicant is responsible for complying with all deadlines and mandatory procedures imposed by the statute, regulations, and rules governing trademark prosecution. Knowing how and when to communicate and correspond with the USPTO, and with whom to communicate, is necessary for successful prosecution. Once again, the TMEP provides detailed rules regarding communications with the USPTO. A trademark practitioner should consult the relevant sections of the TMEP before communicating with the USPTO—including, among others, those in the following table.

Topic Regarding Communications with the USPTO TMEP Section

Rules regarding electronic filing of documents TMEP § 301

General rules regarding correspondence and signatures TMEP § 302

Rules governing receipt and acknowledgment of documents by the USPTO

TMEP § 303

Rules regarding email correspondence with the USPTO TMEP § 304

Rules regarding mailing hard copies of documents to the USPTO

TMEP § 305

Rules regarding transmission of documents to the USPTO via facsimile

TMEP § 306

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Topic Regarding Communications with the USPTO TMEP Section

Rules regarding the USPTO’s correspondence with attorney

TMEP §§ 601.02, 609

General rules regarding the USPTO’s correspondence with applicant

TMEP § 609

Signature requirements for documents filed with the USPTO

TMEP § 611

Rules governing telephone and email contacts with examining attorneys

TMEP § 709.04

Rules governing informal communications with examining attorneys

TMEP § 710.05

Following are some of the most important rules and recommendations regarding the various possible forms of communication with the USPTO during the prosecution of an application.

1. Electronic Submissions Through TEAS

The USPTO strongly encourages parties to utilize the electronic forms available through TEAS to submit applications, responses, amendments, petitions, and other formal submissions to the Office. TMEP § 301; see also Exhibit 4. Upon submission of a form, TEAS generates a “success” page and sends an automatic email confirmation of the filing to the correspondent of record. An Administrator should retain these confirmations as evidence of the filing date of documents. TEAS also creates an automatic entry of the filing in TSDR, establishing yet another record.

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2. Submissions via Mail

Despite its preference for electronic submission of documents via TEAS, the USPTO does accept documents submitted in hard copy form and delivered to the appropriate address. Correspondence to the USPTO should be sent to the following addresses:

Assignment Documents Madrid Protocol Filings

All Other Communications

Assignment Recordation Branch Director of the USPTO P. O. Box 1450 Alexandria, VA 22313-1450

Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, VA 22314-5793

Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451

To expedite processing, all paper correspondence regarding an application should include the following identifying information: (1) serial number; (2) filing date; (3) mark; (4) title of the document; (5) USPTO law office; (6) examining attorney’s name; (7) issuance date of the corresponding office action, if applicable; and (8) contact information for the applicant or the applicant’s lawyer. TMEP § 302.03. A party may obtain a receipt by enclosing a self-addressed, stamped postcard. TMEP § 303.02(c).

3. Certificate of Mailing or Transmission

All filings with the USPTO (except for certain filings, such as initial applications) must include a certificate attesting to the date of deposit or transmission. 37 C.F.R. § 2.197(a). Correspondence is considered to be timely filed, even if received after the deadline, if it was (1) deposited with the USPS (via First-Class Mail or Express Mail) or transmitted to the USPTO by fax transmission before the deadline and (2) accompanied by a proper certificate of mailing or transmission. For the proper form and wording of a certificate of mailing or transmission, see TMEP § 305.02(c), (d).

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4. Submissions via Facsimile

All trademark documents except for applications and some other documents may be filed by fax and are eligible for the benefits of the certificate of transmission. TMEP § 306. The procedure for filing by fax is outlined in TMEP Section 306.04, and the certificate of transmission procedure for filing by fax is outlined in TMEP Section 306.05.

5. Submissions via Email

Applicants and registrants may use email to conduct informal communications regarding a particular application or registration as an alternative to telephone communications. TMEP § 304. However, a party may not use email (and should instead use TEAS) to submit any formal filing, such as a response to an office action. Email may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. The TTAB does not accept email communications.

6. Phone Call vs. Email vs. Formal Written Response

Trademark practitioners sometimes wonder whether they should communicate with an examining attorney through a telephone call, an email, or a formal written response. The general rule is that an applicant may conduct “informal communications” with an examiner regarding an application via telephone or email. See TMEP §§ 709.04, 709.05. Such informal communications might involve, among other things, (1) questions regarding an outstanding office action that do not constitute a response, (2) authorization to issue or an objection to an examiner’s amendment, and/or (3) notification of termination of a cancellation proceeding that is the basis for suspension. Applicants and their representatives should not contact the examiner of a third-party application.

Practice Tip

For substantive issues, an attorney rather than an Administrator should contact the examiner. When an Administrator contacts an examiner (typically for procedural questions), the Administrator should let the examiner know that he or she is not an attorney and does not have authorization to bind the applicant. Also, have any questions ready when calling, and do not expect the examiner to provide legal advice, to train you on USPTO procedures, or to provide a yes or no answer about a refusal.

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Informal communications are useful to obtain a better understanding of the examiner’s thought process. Examiners generally are very helpful in assisting lawyers and Administrators in understanding, and sometimes in overcoming, obstacles to registration. Communicating informally with an examiner regarding an office action often will speed up the process and allow for more efficient prosecution of an application.

7. Functions of an Examining Attorney

In prosecuting an application, an Administrator should be familiar with the most important functions performed by an examiner, including (1) initial examination of an application, (2) issuance of office actions, (3) issuance of priority actions, and (4) entry of an examiner’s amendment. Following is a brief overview of each of these functions:

(1) Initial examination. TMEP § 704. An examiner’s initial examination is a complete review of the application, including the drawing, specimens, international classes, identification of goods and services, support for the filing basis, the fees paid, and more. An initial examination also includes a search for potentially conflicting marks.

(2) Office action. TMEP § 705. An examiner will issue an office action if he or she determines that the mark is not entitled to registration or that an amendment to the application is necessary before the registration may issue. An office action typically will be a formal written document (usually electronic), but an examiner also may email or call. Office actions may be in the form of a formal letter, a priority action, an examiner’s amendment, a suspension notice, or some combination of these. An applicant has six months to respond to an office action.

(3) Priority action. TMEP § 708. A priority action is a special kind of office action that issues typically when there is evidence to support a statutory refusal but the examiner believes that an amendment or explanation will obviate the refusal. An applicant must respond to a priority action within six months, but often an examiner will ask an applicant to respond within a shorter period (e.g., two months) to expedite the process.

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(4) Examiner’s amendment. TMEP § 707. An examiner may use an examiner’s amendment to expedite the prosecution of an application. This is simply a communication to an applicant that the application has been amended in a manner that does not require verification by the applicant. Examiner’s amendments require the authorization of the applicant or the applicant’s authorized representative.

F. Final Refusals

1. Final Office Action

If, after receiving the applicant’s response to a refusal, the examiner is not convinced to withdraw the refusal, he or she will make the refusal “final.” An initial office action is never a final refusal. No matter how egregious the errors may be, every applicant is entitled to at least one chance to respond to any issue raised by the examiner. A final office action will indicate that the only recourse left to the applicant is to provide a response that would comply with requirements (if any) set by the examiner, file an appeal, or abandon the application. TMEP § 714.

If the refusal is based on a citation to a registration, the only way to get past the refusal will be (1) to file a petition to cancel and ultimately succeed in canceling the cited registration; (2) to file a request for reconsideration and/or an appeal contesting the citation to the conflicting registration; or (3) in odd situations, to file a petition to the Commissioner for Trademarks, if permitted under 37 C.F.R. Section 2.146. For other kinds of refusals, such as a refusal to disclaim a term, the applicant can overcome the final refusal by accepting the examiner’s requirements, and thereby avoid an appeal. For Section 44(d) applications, a final refusal cannot be issued until the applicant has submitted the copy of the foreign registration referenced in the application.

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2. Request for Reconsideration

Generally, the only proper response to a final action is a notice of appeal to the TTAB or compliance with an outstanding requirement. TMEP § 715.01. Nonetheless, an applicant may file a request for reconsideration before the deadline for filing an appeal to the TTAB. TMEP § 715.03. However, filing a request for reconsideration does not extend the deadline for filing a notice of appeal or a petition to the Director. TMEP § 715.03(c). Such requests typically are denied.

3. Notice of Appeal

If an applicant wishes to appeal an examiner’s final refusal, he or she must file a notice of appeal with the TTAB within six months of the date of the final refusal. TMEP § 1501. If the applicant does not do so, the application is abandoned. If the applicant’s failure to file a notice of appeal was unintentional, the applicant may file a petition to revive. See TMEP § 1714 et seq.

4. Petitions to the USPTO

An applicant may file various petitions after certain refusals of an application. For example, if there is a Section 2(d) refusal based on likely confusion with a mark that is the subject of a prior registration, the applicant may file a petition to cancel that registration. In those circumstances, before the deadline for responding to the final refusal, the applicant must inform the examiner about the filing of the petition. At that point, the pending application will be suspended until resolution of the cancellation proceeding. TMEP § 716.

In unusual circumstances, a third party can petition the Director of the USPTO to declare an “interference.” Interferences are limited to situations where a party would otherwise be required, but for the interference, to engage in a series of opposition or cancellation proceedings, but there are extraordinary circumstances that would make the remedy of opposition or cancellation

Practice Tip

The most important reason to file a request for reconsideration before or at the same time as filing a notice of appeal is to submit new and/or additional evidence that may be considered on appeal.

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proceedings inadequate or prejudicial to the petitioning party’s rights. See TMEP § 1208.03(b).

In rare situations, applicants or registrants who believe they have been harmed by certain unfair actions of the USPTO, or that they cannot comply with the Trademark Rules of Practice because of an extraordinary situation, may seek equitable relief by filing a petition to the Director of the USPTO. TMEP § 1702. Generally, only procedural, non-substantive issues that arise during the examination process are reviewable via petition to the Director. TMEP § 1704.

G. Publication

If the examining attorney decides, after reviewing an application and any amendments, that the mark appears entitled to registration on the Principal Register, he or she will pass the mark on for publication. “Publication” means that the drawing, the class, and the identification of goods will appear for 30 days in the Trademark Official Gazette, a weekly print publication of the USPTO. The Official Gazette is also available in a searchable Web-based format at http://tmog.uspto.gov.

The purpose of publication is to give notice to the public that the mark is about to be federally registered. During the 30-day publication period (and later if extended), those who believe they would be adversely affected by the registration of the mark on the Principal Register may commence an opposition proceeding, wherein they contest the right of the applicant to obtain a registration.

H. Opposition Proceeding

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration of an applied-for mark. TMEP § 1503.01. An opposition proceeding is an administrative procedure that has many of the characteristics of litigation in federal district court. The USPTO charges a fee for an opposition based on the number of international classes being opposed in the subject application. This fee applies to each party who is an opposer. An opposition may be filed on paper or electronically through the Electronic System for Trademark Trials and Appeals (ESTTA).

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1. Deadlines to Oppose and Extensions

Any notice of opposition must be filed within 30 days after the date of publication, or within an extension of time granted by the Board for filing an opposition. TMEP § 1503.03. Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may file a request to extend the time for filing an opposition.

A person may file a first request for either a 30-day extension, which will be granted automatically, or a 90-day extension, which will be granted only for good cause or with the consent of the applicant. If a person was granted a 30-day extension of time, that person may file a request for an additional extension of 60 days, which will be granted only for good cause or with the consent of the applicant. After 90 days of extension, a person may seek an additional 60 days to oppose by obtaining written consent of the applicant or by showing extraordinary circumstances. The TTAB will grant no extension to file an opposition beyond 180 days after publication.

Publication Period

(30 Days)

37 C.F.R. § 2.102(c)

First Extension

(30 Days)

(no reason necessary)

37 C.F.R. § 102(c)(1)

Additional Extension

(60 Days)

(for good cause or with consent)

37 C.F.R. § 102(c)(2)

Final Extension

(60 Days)

(with consent or under

extraordinary circumstances)

37 C.F.R. § 102(c)(3) First Extension (90 Days)

(for good cause or with consent)

37 C.F.R. § 102(c)(1)

A request for extension to oppose must identify the potential opposer with reasonable certainty, state how many previous extensions have been requested, and specify the period of extension desired.

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2. Bases for Opposition

The most common basis for filing an opposition is that the applied-for mark so resembles the opposer’s federally registered mark or the opposer’s mark or trade name as to be likely to cause confusion and the opposer first used its mark or trade name (either actually or constructively) prior to the applicant. Someone also may oppose an application based on a claim that the applied-for mark (1) will dilute the opposer’s rights in its marks; (2) contains deceptive matter; (3) disparages or falsely suggests a connection with a person or institution; (4) has not been used by the applicant in interstate commerce; or (5) is merely descriptive, generic, or functional. In some circumstances, a person can oppose an application on the basis that it contains fraudulent statements.

3. After the Opposition Period

If a published mark is not successfully opposed by a third party (and assuming there are no ongoing interference or concurrent use proceedings), then (1) for a use-based application or an intent-to-use application that was timely amended to allege use, the registration will be issued in due course; or (2) for an intent-to-use application, the USPTO will issue a notice of allowance.

I. Intent-to-Use Applications

Applications to register a mark on an intent-to-use basis under Section 1(b) are subject to special rules. See TMEP Chapter 1100. Following are the most important issues regarding Section 1(b) applications.

1. Bona Fide Intent to Use

An applicant may file an application based on a bona fide intent to use a mark in commerce “under circumstances showing the good faith of such person.” Lanham Act § 1(b), 15 U.S.C. § 1051(b). Intent-to-use applications under Section 1(b) (and applications under Section 44) must include a verified statement of the applicant’s bona fide (or

Practice Tip

Only file a Section 1(b) application if the client has a good-faith intent to use the mark in commerce, not simply an intent to reserve the mark for possible use.

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good-faith) intention to use the mark in commerce. TMEP § 1101. A request for extension to file an allegation of use also must contain a verified statement of the applicant’s continued bona fide intent to use the mark in commerce. TMEP § 806.01(b).

The USPTO usually will not evaluate the good-faith intent of an applicant in the ex parte examination of a Section 1(b) application, but consideration of issues related to good faith may arise in an inter partes proceeding. For information about an intent-to-use applicant’s assertion of a bona fide intent to use the mark in commerce through a related company, see TMEP § 1201.03(a). For more information about the requirement for an allegation of a bona fide intent to use the mark in commerce in an application filed under Section 44, see TMEP § 1008.

2. Amendment to Allege Use

Before an intent-to-use application can mature into a registration, the applicant must file either (a) an amendment to allege use under Section 1(c) (see TMEP § 1104) or (b) a statement of use under Section 1(d) (see TMEP § 1109) (both referred to as an “allegation of use”). TEAS provides a single electronic form for filing either submission, and the USPTO provides a preview of the complete form.

An amendment to allege use may be filed at any time between the date of filing of the application and the earlier of either the date when the examiner has initially approved the mark for publication or the date of expiration of the six-month period for a response to a final office action. TMEP § 1104.03. The amendment to allege use must include (1) a verified statement that the mark has been used in commerce with the goods and/or services identified in the application, (2) the dates of first use of the mark, and (3) a proper specimen and fee for each class. TMEP § 1104.08.

Practice Tip

An amendment to allege use cannot be filed during the “blackout period” after the application has been approved for publication and before the issuance of a notice of allowance. TMEP § 1104.03. Also, filing an amendment to allege use does not relieve an applicant of the duty to respond in a timely manner to an office action. TMEP § 1105.

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3. Notice of Allowance

Once a Section 1(b) application has advanced past the opposition period without a successful opposition (and assuming there is no interference or pending concurrent use proceeding), then either (a) the registration will issue, if an amendment to allege use was timely filed before the application was approved for publication, or (b) a notice of allowance will be issued. The notice of allowance is important because it establishes the deadline for filing a statement of use. TMEP § 1106. The statement of use must be filed no later than six months after the issuance of the notice of allowance. TMEP § 1108. The Administrator should docket this deadline immediately upon receipt of the notice of allowance.

4. Extension to File a Statement of Use

The initial deadline to file a statement of use may be extended for six months by the filing of a first request for extension, which must include the required fee and a verified statement testifying to the applicant’s continued bona fide intent to use the mark in commerce. The applicant also can request up to four additional six-month extension requests, for a total period of no more than 36 months after the mailing date of the notice of allowance. These later requests for extension must include not only the required fee and a verified statement of continued bona fide intent to use the mark in commerce but also a statement of facts attesting to the applicant’s ongoing efforts to begin its use of the mark in commerce. These facts might include product research and development, market research, manufacturing activities, promotional efforts, or steps to acquire appropriate distributors. Electronic submission of these extension requests through TEAS is preferable, because the USPTO grants extensions more quickly if the requests are filed through TEAS.

If the USPTO denies a request for extension before the six-month period has run, the applicant must file either a substitute request or the statement of use. If the deadline passes without either the granting of a request for extension or the filing

Practice Tip

If an applicant misses a deadline to file a statement of use or an extension request and the application is deemed abandoned, the applicant can still file a petition to revive within two months after issuance of the notice of abandonment, but he or she must show that the delay was unintentional. TMEP § 1714.

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of an acceptable statement of use, the application will be deemed abandoned. If the applicant then wishes to try to save the application, he or she will have to do so by filing a petition for revival, showing that the delay was unintentional.

An applicant also may file a request for an extension of time to file a statement of use either (a) with the statement of use or (b) after filing the statement of use (if there is time remaining in the existing six-month period in which the statement of use was to be filed), provided the extension, if granted, would not extend the time for filing the statement of use more than 36 months after the notice of allowance. The applicant may not request any further extensions of time after this type of extension request. TMEP § 1108.03. The purpose of such a request (sometimes called an “insurance” extension request) is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use.

Similar to an amendment to allege use, the statement of use must include, among other things, (1) a verified statement that the mark has been used in commerce with the goods and services identified in the application, (2) the dates of first use of the mark, and (3) a proper specimen and fee for each class. TMEP § 1109. Unless the applicant intends to delete goods or services from the application, those goods or services described in the statement of use as well as in all prior requests for extension must match exactly the goods and services specified in the notice of allowance. Any inadvertent omission will lead to the involuntary deletion of goods or services from the application.

J. Ex Parte Appeals

An applicant who wishes to contest a refusal based on a matter of substance must file an ex parte appeal with the TTAB. TMEP § 1501.01.

Practice Tip

One way to avoid inadvertent omission of goods or services in a statement of use is simply to list them as “those goods and/or services identified in the notice of allowance for this application.”

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1. Appeal Process

A notice of appeal, with the appropriate fee, must be filed within the six-month period following the date of mailing of the final office action. An appeal brief is due no later than 60 days after the appeal is filed. The examiner will file a responsive brief within 60 days of receipt of the appellant’s brief, and the applicant then has 20 days to file a reply. The examiner may not raise new grounds for refusal on appeal. If an oral hearing is desired, it must be requested in a separate notice filed no more than ten days after the due date for a reply brief. See TMEP § 1501.

2. Governing Rules

The TTAB Manual of Procedure (TBMP) provides the detailed set of rules governing ex parte appeals before the TTAB. These rules are based generally on the Federal Rules of Civil Procedure. An Administrator assisting in an ex parte appeal should be very familiar with the TBMP.

3. Grounds

Overcoming a final refusal through an appeal to the TTAB is difficult, expensive, and time-consuming. The TTAB affirms the vast majority of final refusals. Nonetheless, an applicant may appeal a final refusal on any substantive or procedural ground on which the applicant believes the examiner erred. Usually, examiners do not err with respect to the procedural aspect of examination. However, sometimes they take positions, particularly on substantive issues, that are unlikely to withstand scrutiny when viewed through the lens of an ex parte appeal.

4. Burdens of Proof

Many of the standards governing registration of marks—for example, likelihood of confusion, mere descriptiveness, material alterations—are subjective. For that reason, often the outcome of an appeal turns on the burden of proof. In some cases, the examiner faces the burden of presenting a prima facie case supporting the appeal (e.g., in establishing that trade dress is functional). In other cases, the

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applicant must overcome certain presumptions against registration of the mark (e.g., the presumption in favor of a prior-filed registration in the context of likelihood of confusion). An Administrator can be helpful in assisting a lawyer in crafting arguments by being familiar with the relevant rules in the TBMP and the TMEP that govern the burden of proof on appeal.

5. Evidence

Regardless of how good the legal arguments are, concrete evidence is necessary to win an ex parte appeal. An Administrator who has faithfully documented the history, status, and use of a mark can be instrumental to a successful appeal. Even with such documentation, however, an Administrator must be familiar with the rules in order to know how and when to submit such evidence. Most importantly, the evidence submitted to the examiner generally cannot be supplemented on appeal. Therefore, an Administrator should take steps before the appeal to ensure that all necessary evidence has been presented to the USPTO.

VI. Issuance of Federal Registration

A. Registration Certificate

The USPTO issues registration certificates for all registrations resulting from applications based on Section 1(a), 1(b), 44(d), 44(e), or 66(a). The registration certificate includes the owner’s name and address, the mark, the goods/services, and the international class(es). The certificate is signed by the Director and issued under the seal of the USPTO. See TMEP § 1601.01(a). The registration certificate constitutes important evidence of not only the registrant’s ownership of the mark but also all the statutory presumptions and benefits that go with a federal registration. See Section II.A.1, above.

If the registrant does not receive the original certificate from the USPTO, he or she can obtain a duplicate certificate by faxing a written request within one year of issuance. TMEP § 1601.01(b). The registrant also may obtain a certified copy of

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the registration from the Document Services Branch of the Public Records Division of the USPTO for a fee. TMEP § 111.

B. Correcting Errors in the Registration

Sometimes, an error on the registration certificate is discovered only after issuance of the registration. In that case, an Administrator should determine (1) whether the error is correctable and (2) what caused the error. A registration based on an application under Section 1 or Section 44 of the Lanham Act may be amended “for good cause.” TMEP § 1609.01(b).

A mark itself may be amended only if the change does not result in a material alteration. TMEP § 1609.02. International classifications of a registered mark may be amended if the requested classification is consistent with the current version of the Nice Agreement. TMEP § 1609.04. Disclaimers may be added to but not removed from a registration. TMEP § 1609.05. Dates of first use may be amended even if the corrected dates are later than the dates set forth in the registration; however, the USPTO will not enter a correction if the corrected dates are later than the dates that would have been accepted during examination. TMEP § 1609.07.

If there is an error in a registration because of a mistake on the part of the USPTO, the error may be corrected without charge. TMEP § 1609.10(a). The owner of the registration should submit a written request specifying the error to be corrected. If a mistake in a registration occurs in good faith through the fault of the registrant, the USPTO may correct the error upon written request and payment of the required fee, provided the correction does not result in a change that would require republication of the mark. TMEP § 1609.10(b). The written request must include a verified statement specifying the error, explaining how the error occurred, and showing that it occurred in good faith.

VII. State Registration of Trademarks

Trademarks and service marks also may be registered under state law. Most states have adopted the Model State Trademark Act, drafted by INTA. Although

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most commentators are unenthusiastic about registration of trademarks at the state level, there are some important potential benefits to doing so. This section outlines these benefits and provides a broad overview of how to obtain state registrations.

A. Rights and Benefits Afforded by a State Registration

There are a number of reasons why a mark owner might want to register a mark at the state level instead of or in combination with a federal registration. The following is a list of some of the rights and benefits afforded by, and reasons to seek, state registration of a mark.

Why Trademark Owners Should Consider Registering a Mark at the State Level

1. The mark owner cannot register the mark federally but can with the state. A mark owner who is ineligible to register a mark at the federal level may still be entitled to register a mark at the state level. For example, if a business is not using a mark in interstate commerce but is purely local in nature, it may seek a state trademark registration to enjoy formal recognition of its trademark rights. Also, marks that cannot be registered at the federal level (e.g., merely descriptive marks) may possibly be registered at the state level.

2. Cost and speed. The filing fees and other costs of obtaining a state registration are lower than for a federal registration. The examination process for a state registration application may be cursory, ministerial, or even nonexistent, and obtaining a state registration is therefore much faster than obtaining a federal registration.

3. Public notice of rights. A state registration provides another public record that is likely to show up on a third party’s trademark search. A party that later adopts the same mark with constructive knowledge of a state registration might not be able to claim innocent adoption.

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Why Trademark Owners Should Consider Registering a Mark at the State Level

4. Demonstration that the owner values the mark. In certain situations, such as the sale of a business, state trademark registrations may demonstrate to the other side in the negotiations the importance and value that the mark owner places on its marks.

5. Evidence of ownership. Registration in some states constitutes prima facie evidence of one’s ownership of a mark and the mark’s validity. This presumption may be useful if another party later challenges one’s ownership of a mark or whether it is protectable as a mark.

6. Evidence of use. A state trademark registration is proof that the registrant claimed that it was using a mark as of the date of the filing. At a minimum, this provides a record on which a registrant can bolster underlying common-law rights and establish formal state recognition of those rights.

7. Possible presumptive right to use the mark statewide. The rule in a minority of states is that state registration of a mark entitles the registrant to a presumption of statewide exclusive rights in the mark. However, the rule in most states is that state registration of a mark does not give a registrant the right to use the mark beyond the actual territorial use of the mark. Even in these states, a state registration may dissuade, or be used to stop, junior users who later begin to use, or expand their use of, a similar mark.

8. Potential additional remedies. There may be remedies afforded to state registrants of marks that are not available under federal law. These may include additional equitable remedies in the form of specific injunctive relief or additional legal remedies in the form of damages (e.g., punitive damages, which are not available under federal law). A state registration also may allow for criminal enforcement of the owner’s trademark rights against counterfeiters in the state where the registration issues.

Despite their benefits, state trademark registrations generally do not afford significant rights beyond the common-law rights already held by the mark owner.

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Thus, most practitioners do not file state trademark registrations on behalf of clients. Unlike federal registrations, state registrations cannot become incontestable and often are easier to attack. The presumptions that apply to federal trademark registrations often do not apply to state trademark registrations.

In sum, while the rights afforded by a federal registration greatly outweigh those of a state registration, there are some rights and benefits afforded by a state registration that either are not available through a federal registration or are more easily obtained through a state registration.

B. Applications

In the vast majority of states, the office of the secretary of state administers the laws and systems governing state trademark registrations. The USPTO provides a list of websites containing information about how to apply for a state trademark registration in each state. The Secretary of State of Maryland provides a similar listing, along with contact information for the relevant office in each state that handles state trademark registrations.

State trademark registrations generally are less expensive than federal registrations, having filing fees in the range of $5 to $100. State registrations typically issue within a couple of weeks or months. Many states have forms for filing a state trademark registration available online. Where a state does not have downloadable trademark forms, the forms can be obtained by contacting the office of the state’s secretary of state.

In virtually every state (the sole exception being South Dakota), a mark owner cannot apply to register a mark without actually using the mark in connection with the sale of goods or services. In other words, there is no intent-to-use basis for applying to register marks at the state level.

Practice Tip

INTA’s U.S. State Trademark and Unfair Competition Law, written by local practitioners, provides the most comprehensive and useful guide available regarding the procedures and practices necessary to register a mark in each state.

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C. Renewals

Most state trademark and service mark registrations are renewable. The Administrator should review the registration file and obtain copies of the relevant statutes and regulations with regard to renewal of the particular state registrations. If the state provides renewal forms, the Administrator should obtain the appropriate forms, either online or by requesting them from the office of the state’s secretary of state. An Administrator should follow the same general principles for record keeping and docketing of state registrations as apply to federal registrations.

D. Cancellation

Generally, someone can cancel a state trademark registration only through civil litigation resulting in an order from the court to the state to cancel the particular registration. Before commencing such litigation, however, the party seeking cancellation should consult the particular state’s statutes and administrative regulations to determine whether any administrative procedure is available for canceling a state registration.

Practice Tip

An Administrator should prepare and maintain an electronic or hard copy folder of state trademark application and renewal forms for each state that are of interest to clients.

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Exhibit 1

Useful Resources and Guides for Protecting Trademarks at the Federal and State Level

1. INTA Resources on Protecting Marks a. Filing a Trademark Application in the United States b. Trademark Fees (United States) c. U.S. Trademark Registrations: Principal Register vs. Supplemental

Register d. Country Guides—United States e. State Trademark Registrations in the United States

2. U.S. Patent and Trademark Office (USPTO) Resources a. Trademark Manual of Examining Procedure (January 2015) b. U.S. Trademark Law—Rules of Practice and Federal Statutes c. U.S. Acceptable Identification of Goods and Services Manual d. International Schedule of Classes of Goods and Services e. Trademark Electronic Application System (TEAS) f. Trademark Status and Document Retrieval g. Trademark Information Network (TMIN) Videos (also available on

YouTube) h. Basic Facts About Trademarks i. Trademark FAQs j. Trademark Registration Timelines k. Trademark Fee Information

3. Trademark Trial and Appeal Board (TTAB) Resources a. TTAB Manual of Procedure (TBMP) (June 2014)

b. Electronic System for Trademark Trials and Appeals (ESTTA) c. TTAB Inquiry System (TTABVUE) d. TTAB Facts and Questions

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4. State Trademark Registration Resources a. USPTO’s List of State Trademark Information Links b. National Index of Trademark Offices c. INTA’s U.S. State Trademark and Unfair Competition Law

5. Customs and Border Patrol (CBP) Resources a. Customs and Border Patrol (CBP)—Intellectual Property Rights b. CBP Intellectual Property Rights e-Recordation (IPRR) c. CBP Intellectual Property Rights Search (IPRS)

6. Relevant Portions of Trademark Treatises a. J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition i. Vol. 1, Ch. 2, Fundamental Principles of Trademark Protection

ii. Vol. 3, Ch. 19, Federal Registration of Marks b. Jerome Gilson and Anne Gilson Lalonde, Gilson on Trademarks

i. Vol. 1, Ch. 3, Establishing Trademark Rights ii. Vol. 1, Ch. 4, Federal Trademark Registrations

iii. Vol. 4, Trademark Prosecution Forms c. Louis Altman and Malla Pollack, Callmann on Unfair Competition,

Trademarks and Monopolies, Vol. 4A, Ch. 26, Registration of Trademarks

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Exhibit 2

Application Filed

Mark Published

USPTO Issues Office

Action

Examiner Assigned and Initial

Examination

USPTO Issues Final Office

Action

Mark Published

Mark Published

Applicant Responds

No Response (Application Abandons)

Applicant Files Request for

Reconsideration

No Response (Application Abandons)

Applicant Files Notice of Appeal

Ex Parte Appeal (TTAB Proceeding)

Opposition Period

Opposition Period

Reg. Issues

Opposition Period

Opposition Sustained

(Registration Refused)

Opposition (TTAB Proceeding)

Reg. Issues Reg. Issues Reg. Issues

Request Denied

Refusal Affirmed

The Trademark Application Process (Flowchart/Approximate Timeline of Use-Based Application)

Appeal to Fed. Cir.

Appeal to Dist. Ct.

Refusal Reversed

Opposition Refused

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Exhibit 3

Application Filed

Mark Published

USPTO Issues Office Action

Examiner Assigned and Initial

Examination

USPTO Issues Final Office

Action

Mark Published

Mark Published

Applicant Responds

No Response (Application Abandons)

Applicant Files Request for

Reconsideration

No Response (Application Abandons)

Applicant Files Notice of Appeal

Ex Parte Appeal (TTAB Proceeding)

Opposition Period

Opposition Period

Reg. Issues

Opposition Period

Opposition Sustained

(Registration Refused)

Opposition (TTAB Proceeding)

Reg. Issues Reg. Issues

Reg. Issues

Request Denied

Refusal Affirmed

The Trademark Application Process (Flowchart/Approximate Timeline of Intent-to-Use Application)

Refusal Reversed

Opposition Refused

Notice of Allowance

Statement of Use

Extension Request

Notice of Allowance

Statement of Use

Extension Request

Notice of Allowance

Statement of Use

Extension Request

Notice of Allowance

Statement of Use

Extension Request

Appeal to Fed. Cir.

Appeal to Dist. Ct.

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Exhibit 4

Electronic Trademark Application and Prosecution Forms Available from the USPTO

Initial Application Forms

1. TEAS Plus Application—form for a TEAS Plus application, which is the least expensive and most efficient option, but this form requires submission of a “complete application,” use of an identification of goods/services from the USPTO’s ID Manual, and use of TEAS for various filings and to accept communications from the USPTO via email.

2. TEAS RF Application—form for a TEAS RF (reduced fee) application. This option is more expensive than the TEAS Plus application, but less expensive than a regular TEAS application. Using this form requires an applicant to agree to use TEAS for various filings and to accept communications from the USPTO via email but does not require an identification of goods/services from the USPTO’s ID Manual.

3. Regular TEAS Application—form used to file a TEAS application that is not a TEAS Plus application or a TEAS RF application.

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Response Forms

1. Response to Office Action Form—form for filing response to a pre-publication office action, priority action, or examiner’s amendment from an examining attorney or to pay an additional fee (complete preview of the form also available); note that this form is not for requests for reconsideration, responding to office actions after publication, or filing a statement of use.

2. Request for Reconsideration After Final Office Action Form—for filing request for reconsideration to respond to a final refusal by an examining attorney (complete preview of the form also available); note that this is not the form for submitting a notice of appeal to the TTAB after a final refusal, which is done through ESTTA.

3. Response to Suspension Inquiry or Letter of Suspension—form used to respond to a suspension inquiry or to present arguments in favor of removal of an application from suspension.

4. Substitute Trademark/Service Mark Application, Principal Register—form used to respond to office action indicating that the applicant used the wrong form to file an application to register a trademark or service mark on the Principal Register.

5. Substitute Certification Mark—form used to respond to office action indicating that the applicant used the wrong form to file an application to register a certification mark.

6. Substitute Collective Membership Mark—form used to respond to office action indicating that the applicant used the wrong form to file an application to register a collective membership mark.

7. Substitute Collective Trademark/Service Mark—form used to respond to office action indicating that the applicant used the wrong form to file an application to register a collective mark.

8. Response to Intent-to-Use (ITU)/Divisional Unit Office Action—form used to respond to an office action that the ITU Unit issued after publication or to pay an additional fee after a communication from the ITU Unit. Note: Do not use this form to respond to any office action or to file a statement of use.

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Response Forms

9. Response to Post-Registration Office Action—form used to respond to an office action that a post-registration examiner issued or to pay an additional fee related to a post-registration matter.

10. Response to Petition to Revive Deficiency Letter—form used to respond to a notice of deficiency issued by the USPTO after the filing of an incomplete petition to revive.

11. Response to Petition to Director Inquiry Letter—form used to respond to a notice of deficiency issued by the USPTO after the filing of an incomplete petition to the Director.

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Intent-to-Use (ITU) Forms

1. Statement of Use/Amendment to Allege Use for ITU Application—form used to file either an amendment to allege use prior to approval of mark for publication (TMEP § 1104) or a statement of use after issuance of a notice of allowance (TMEP § 1109) (complete preview of the form also available); note that this form cannot be filed during the period between when a mark is approved for publication and when the notice of allowance issues.

2. Request for Extension of Time to File a Statement of Use—form used to file a request for extension of time to file a statement of use within six months after a notice of allowance issues; note that an applicant may file up to five such extensions, each lasting six months, for a total of 36 months after the notice of allowance. (See TMEP § 1108.)

3. Response to Intent-to-Use (ITU)/Divisional Unit Office Action—form used to respond to an office action that the ITU Unit issued after publication or to pay an additional fee after a communication from the ITU Unit. Note: Do not use this form to respond to any office action or to file a statement of use.

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Post-Publication/Post-Notice of Allowance Forms

1. Post-Approval/Publication Amendment Form—form used to amend an application during the period between publication and registration (see, e.g., TMEP § 806.03 on amendments to add or substitute a basis; TMEP § 807.13 on amendments to a mark; TMEP § 816 on amendments to Supplemental Register; TMEP § 903.04 on amendments to dates of use; TMEP §§ 1402.06, 1402.07, and 1402.14 on amendments to identification of goods and services; TMEP § 1403.02 on amendments to multi-class applications).

2. Request to Delete Section 1(b) Basis, Intent to Use—form used to delete intent-to-use basis for an entire application or an entire class of goods/services within an application; note that this form may not be used (a) to delete the Section 1(b) basis when it is the only basis stated in the application; (b) to delete the Section 1(b) basis for only some of the goods/services within a class; (c) to delete the Section 1(b) basis for an entire class that is based on Section 1(b), when those goods/services and or class(es) are not also supported by another basis; (d) to delete all of the goods/services and/or classes from an application based on Section 1(b) after issuance of a notice of allowance; or (e) to file a request to divide.

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Correspondence and Lawyer / Domestic Representative Forms

1. Change of Correspondence Address Form—form used to change a correspondence address where any physical correspondence from the USPTO regarding an application or a registration will be sent (TMEP § 609).

2. Change of Owner’s Address Form—form used to change the address of the owner of the application or registration (which may be the same as or different from the correspondence address).

3. Change of Domestic Representative’s Address—form used only if the applicant or registrant has appointed a domestic representative and the address for such representative has changed.

4. Withdrawal of Lawyer—form used to withdraw as an attorney of record for either a pending application or a registered mark.

5. Replacement of Lawyer of Record with Another Already-Appointed Lawyer—form used if an applicant has designated lawyer of record, and also named other appointed or associate lawyers, and now seeks to replace a lawyer of record with another already-appointed lawyer.

6. Revocation of Lawyer/Domestic Representative and/or Appointment of Lawyer/Domestic Representative—form used to revoke and/or appoint a lawyer or domestic representative (37 C.F.R. § 10.14). Correspondence regarding an application or registration will be sent to the owner only if there is no lawyer or domestic representative appointed; otherwise, correspondence will go only to the respective appointed lawyer or domestic representative. A domestic representative is a person or entity appointed by a foreign applicant or foreign representative to represent such applicant or registrant before the USPTO.

7. Request to Withdraw as Domestic Representative—form used by previously appointed domestic representative to withdraw as the domestic representative for an application or registration.

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Petition Forms

1. Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action—form used to revive an application abandoned for failure to respond to an office action; may be filed only if the delay in responding to the office action was unintentional; must be filed within two months after mailing date of notice of abandonment, or, if the applicant never received such notice and was diligent in prosecuting the application (i.e., has checked the status of the application every six months), within two months after becoming aware of abandonment. See 37 C.F.R. § 2.66.

2. Petition to Revive Abandoned Application—Failure to File Statement of Use or Extension Request—form used to revive an intent-to-use application abandoned for failure to file timely a statement of use, or an request for extension to file a statement of use, after the issuance of a notice of allowance; may be filed only if the delay in filing a statement of use or an extension request was unintentional; must be filed within two months after mailing date of notice of abandonment, or, if the applicant never received such notice and was diligent in prosecuting the application (i.e., has checked the status of the application every six months), within two months after becoming aware of abandonment. See 37 C.F.R. § 2.66.

3. Petition to the Director Under Trademark Rule 2.146—form used to petition the Director of the USPTO with respect to certain issues listed in 37 C.F.R. § 2.146 (see TMEP §§ 1702, 1703), such as (1) a petition to review an examining attorney’s formal requirement with respect to non-substantive issues (TMEP § 1704); (2) a petition to reverse an examining attorney’s holding of abandonment for failure to file a complete response to an office action (see TMEP § 1713); (3) a petition to add or substitute a basis after publication (TMEP § 806.03(j)); (4) a petition to review the refusal of the Madrid processing unit to certify an application for International Registration (TMEP § 1902.03(a)); and (5) petitions to reverse a non-final decision of the TTAB (TBMP §§ 901.02(a), 905). Note that this form should not be used (a) to request an amendment or correction of a registration (use the Section 7 Request Form for that) or (b) to file a petition to review the denial of a letter of protest (use the Letter of Protest Form).

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Petition Forms

4. Petition to Make Special— form used to petition to advance initial examination of an application out of its regular order. A petition to make special must be accompanied by the petition fee ($100), an explanation of why special action is requested, and a statement of facts that shows that special action is justified, which must be supported by an affidavit or declaration under 37 C.F.R. § 2.20.

5. Request to Restore Filing Date—form used if a previously filed application was denied a filing date and the applicant has the required evidence to show that the applicant is entitled to the earlier filing date. The applicant must first file a new application and have a new serial number.

6. Request to Make Special—form to request to advance initial examination of an application out of its regular order because the mark in the application was the subject of an inadvertently cancelled or expired previous registration. No petition fee is required in this situation.

7. Request for Reinstatement—form used to request reinstatement of an application that was abandoned due to USPTO error. The applicant must have clear evidence of USPTO error to support the applicant’s request for reinstatement.

8. Due Diligence Petition Under Trademark Rule 2.66—form used if the applicant did not receive the notice of abandonment and the applicant is now filing a petition to revive more than two months after the issue date of the notice of abandonment. An applicant also may use this form to submit a “Request for Reinstatement for an Application Abandoned in Error.”

9. Petition to Change the Filing Basis After Publication— form used to petition for a change in the filing basis for registration after a mark has been published for opposition. See TMEP § 806.03(j) et seq.

10. Letter of Protest—form used to protest the registration of a mark currently pending in the USPTO. The submitting party must provide (1) grounds for refusing registration during ex parte examination (e.g., the mark is likely to cause confusion with an existing registration or the mark is merely descriptive of the goods or services); (2) factual and objective evidence attached to the letter that the submitting party would like the examining

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Petition Forms

attorney to consider (arguments within your letter are never sent to the examining attorney); and (3) a name and address to which to send the USPTO’s response. The USPTO will deny a letter of protest that merely presents purely adversarial arguments, is based solely on common law or prior use without an existing federal registration or prior pending application, or is otherwise inappropriate. See TMEP § 1715.

11. Response to Petition to Revive Deficiency Letter—form used only if a petitioner is attempting to respond to a deficiency notice that the USPTO issued after filing of an incomplete Petition to Revive.

12. Response to Petition to Director Inquiry Letter—form used only if a petitioner is attempting to respond to a notice of deficiency that the USPTO issued after filing of an incomplete Petition to the Director.

13. Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA—form used to file a petition to revive after a Notice of Allowance has issued and the application has abandoned for failure to file a statement of use, under one of the following limited situations: (a) the petitioner is requesting to delete all of the ITU goods in the application; or (b) the petitioner is requesting to delete the ITU basis in the application and rely on another basis already of record in the application.

14. Petition to Director to Review Denial of Certification of International Application—form used to file a petition to the Director specifically to review the denial of certification by the USPTO’s Madrid Processing Unit of an application for International Registration through the Madrid Protocol.

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Miscellaneous Forms

1. Voluntary Amendment Not in Response to USPTO Office Action/Letter—form used to (a) request a change to an application prior to examination; (b) request a change to an already-examined application not yet approved for publication, where no other mechanism exists; (c) request a change for an application filed under the Madrid Protocol (Section 66(a)) not yet approved for publication, where no other mechanism exists, but only for limited purposes; or (d) supplement or modify information already submitted through a post-registration filing prior to the Post-Registration Specialist’s examining the filing.

2. Request for Express Abandonment (Withdrawal) of Application—form used by an applicant to request express abandonment, that is, withdrawal, of the applicant’s own pending application.

3. Request to Divide Application—form used to request that a pending application be divided into two or more separate applications upon payment of the applicable fees. An applicant may request division of an application for any reason, but a processing fee is due for each new application created. When dividing an application for some, but not all, of the goods or services in a class, this form must be accompanied by the fee for dividing (currently $100) and by an application filing fee (currently $325) for each new separate application created by the division.

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Registration Maintenance, Renewal, Correction Forms

1. Combined Declaration of Use and Incontestability Under Sections 8 and 15—form used to file a Combined Declaration of Use and Incontestability under Sections 8 and 15. This form may be filed only if a registrant has continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five consecutive years after the date of registration. A registrant must submit the Combined Declaration, specimen, and fee on a date that falls on or between the fifth and sixth anniversaries of the registration (or, for an extra fee of $100 per class, a registrant may file within the six-month grace period following the sixth anniversary date). If the registrant has not continuously used the mark in commerce for five consecutive years, the registrant must still file a Section 8 Declaration.

2. Declaration of Use and/or Excusable Non-use of a Mark Under Section 8—form used to file a Section 8 declaration. A registrant must submit a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth and sixth anniversaries of the registration (or, for an extra fee of $100 per class, a registrant may file within the six-month grace period following the sixth anniversary date). Failure to file a Section 8 declaration will result in cancellation of the registration.

3. Combined Declaration of Use and/or Excusable Non-use/Application for Renewal Under Sections 8 and 9—form used to file a combined Section 8 declaration and renewal. A registrant must file a Section 8 declaration, specimen, and fee on date that falls on or between the ninth and tenth anniversaries of the registration, and each successive ten-year period thereafter (or, for an extra fee of $100 per class, a registrant may file within the six-month grace period). Also, a registrant must file a renewal application within the same period (or, for an extra fee of $100 per class, a registrant may file within the six-month grace period following the registration expiration date). Failure to file this form will result in cancellation/expiration of the registration.

4. Declaration of Incontestability of a Mark Under Section 15—form used to claim that a mark registered on the Principal Register is now incontestable, once the mark has been in continuous use in commerce for a period of five years after the date of registration, or date of publication

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under Section 12(c), and the mark is still in use in commerce. (Section 15 does NOT apply to marks on the Supplemental Register.)

5. Section 7 Request for Amendment or Correction of Registration Certificate—form used to submit a request to correct information in a registration certificate, namely, an immaterial error caused by the owner or the USPTO. A request to amend a registration may be submitted to request immaterial changes to the mark and/or other information on the registration certificate.

6. Surrender of Registration for Cancellation—form used to voluntarily surrender either (a) an entire registration for cancellation under Section 7(e), that is, as to all classes in the registration; or (b) fewer than all classes in a registration.

7. Request to Divide Registration—form used to divide a registration based on an application under Section 1 or Section 44 if ownership of the registration has changed with respect to some but not all of the goods and/or services.

8. Section 12(c) Affidavit—form used only if a registrant’s mark originally registered under the prior Trademark Acts of 1905 or 1881 and the registrant now wishes to claim the benefits of the Act of 1946.

9. Declaration of Use and Excusable Non-use Under Section 71—form used to submit a Section 71 declaration, specimen, and fee on a date that falls on or between the fifth- and sixth-year anniversaries of the date on which the USPTO issued the certificate of extension of protection (or, for an extra fee of $100.00 per class, a registrant may file within the six-month grace period following the sixth-year anniversary date). A registrant also must subsequently file a Section 71 declaration, specimen, and fee on a date that falls on or between the ninth- and tenth-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and each successive ten-year period thereafter (or, for an extra fee of $100 per class, a registrant may file within the six-month grace period following each ten-year period).

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10. Combined Declaration of Use and Incontestability Under Sections 71 and 15—form used to file a Combined Declaration of Use and Incontestability under Sections 71 and 15.

11. Response to Post-Registration Office Action—form used either (a) to respond to an office action that a post-registration examiner has issued or (b) to pay an additional fee related to a post-registration matter.