Header graphic for print

Back to Basics: Trademarks Part 4

What Happens After My Application is Filed?

After your application is filed, you should receive an email from the USPTO confirming the submission. In a few business days, the USPTO will confirm the application has the necessary information to be considered. On average, it is then taking about two to three months for an application to be assigned to an attorney within the USPTO. If there are no issues, the USPTO will publish the mark to see if anyone in the public challenges the mark. If no one timely challenges the mark after it is published, then your mark will be registered approximately three months later.

If the USPTO has an issues with your application, it may issue a letter to you which is referred to as an “Office Action.”  At that point, you can respond to the USPTO or abandon your efforts. You may want to consult with qualified counsel about the appropriate response. Usually, there is a deadline to respond, so taking the Office Action seriously is important. If the USPTO continues to challenge your application, you can eventually file an appeal with the Trademark Trial and Appeal Board which is commonly referred to as the TTAB. You may also end up before the TTAB if a third party challenges your mark. If you find yourself involved in a TTAB proceeding, you may want to hire an attorney. You can represent yourself, but the TTAB is just like a trial and there are procedural rules you will be expected to follow that may trip you up.

What are some common issues raised by the USPTO about trademark registrations?

The USPTO may raise an issue through the issuance of Office Action for a number of reasons including: (1) your mark is generic or descriptive; (2) your mark is too similar to someone else’s; (3) you need to disclaim part of your mark; or (4) you need to move from the principal to the supplemental register. As explained above, you may want to consult with an attorney about any one of these issues. You are free to challenge the USPTO’s initial decision on these issues. We will briefly describe the latter two issues: disclaimer and the supplemental register.

Disclaimers

Many times your mark may be a group of words together with one or more of them describing the product (e.g., tires) or be merely descriptive (e.g., great). While it may be appropriate to register the mark, as a whole, the USPTO may raise questions if you try to claim some of the individual product or descriptive terms. Thus, you may want to disclaim those words without giving up on registering your mark as a whole. For example if you try to register “Great Turtle Tires,” the USPTO may ask you to disclaim the terms “great,” and “tires” so that you cannot claim exclusivity to those terms within your appropriate category.

The disclaimer does not remove the unregistrable part of your mark or affect its appearance. The disclaimer will be on the USPTO database and it lets the world know you are not making an exclusive claim to that particular part of your mark. If you choose not to disclaim part of your mark, it may be cause for rejection. Often times, you can simply consent to the proposed disclaimer, but you may want to consult with a trademark attorney before doing so.

The USPTO uses the following examples to illustrate when you would need to use a disclaimer:

  • Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
  • Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
  • Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
  • Business Type Designations: Disclaiming “Corporation”, or “Inc.”
  • Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
  • Well-known Symbols: Disclaiming the “$” for a financial services company.
  • Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
  • Compressed compound wording: Disclaim “Cool Pack.com” from the brand CoolPack.com because CoolPack is a compressed compound term and .com provides no indication of the source of the goods or services.
  • Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. The example the USPTO uses is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
  • Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

The Supplemental Register

Another common issue raised by the USPTO is whether you should be on the Supplemental Register as opposed to the Principal Register. If your mark is descriptive, a surname or a geographic term, then you may have to try and register it on the Supplemental Register. Often times, the USPTO will deny your right to file on the Principal Register and suggest you file on the Supplemental Register.

Even if you are on the Supplemental Register? You can still:

*          Use the ® symbol

*          Put others on notice that you are already using the mark

*          File a trademark infringement suit in federal court

*          Prevent others from obtaining confusingly similar marks from the USPTO – even on the Principal Register.

Unfortunately, you are not the presumed owner of a valid mark if there is a lawsuit. You can’t use a Supplemental Register mark to prevent the importation of counterfeit goods. Finally, regardless of how long you have your mark registered on the Supplemental Register, it will never become incontestable like a mark on the Principal Register can. If your mark obtains secondary meaning, you can refile for acceptance on the Principal Register even if you first filed on the Supplemental Register.