Trademark applications are generally filed using an electronic application available through the USPTO’s website. After identifying the trademark and the trademark owner, the applicant chooses which classes of goods and/or services are sold under the trademark. It is particularly important to understand how the USPTO Examiners use this classification system as it can be difficult to add classes or amend the class descriptions after the application is filed. As an example, if an applicant selects gift boxes, then they are representing to the USPTO they are selling empty gift boxes. If the gift boxes actually contain gifts or sets of gifts, then the class description should reflect the contents of the gift box and there are additional rules that pertain to how to identify the contents of the gift boxes.
Another crucial aspect of the application involves providing evidence that the trademark is being used in interstate commerce. Use in commerce with respect to goods means that (1) the mark is displayed on the goods or their containers, displays, tags or, failing all else, the documents associated with the goods and (2) that the goods have been either sold or transported “in commerce.” It is not sufficient to simply mark the goods and offer them for sale. This means that the goods must actually exist at the time “use in commerce” is claimed to have begun. “Use in commerce” with respect to service marks means (1) the mark is displayed in connection with the sale or advertising of the services and (2) the services are rendered in commerce. In addition, the date of first use must be disclosed – note, it is to the applicant’s advantage to locate documentation of that first use or sale as possible evidence in a later proceeding.
Applications are assigned to Examiners about three months after filing. Currently the USPTO estimates it takes an average of 10 months for them to process an application and issue a registration or final denial. After the Examiner reviews the application and determines the mark can be registered, the Examiner conducts a search for confusingly similar trademarks. If they locate a registered trademark that is similar to the one named in the application, they will deny registration of the application in a formal office action to which the applicant can respond. After two rounds, if the Applicant has not persuaded the Examiner the trademark should be registered, the Applicant either abandons the application, files a request for reconsideration or appeals to the Trademark Trial and Appeal Board.
Once the Examiner determines the application should be allowed, they authorize the trademark to be published in the USPTO’s Official Gazette for 30 days. This process allows other trademark owners the right to contest the applicant’s registration of their mark through a trial-like proceeding called an Opposition. Other trademark owners must either file an opposition or a request for more time to file the opposition within the 30 day publication window. After publication, if no opposition is filed, the USPTO issues a registration certificate.
After Registration – Maintaining the trademark registration
To keep a trademark registration in force, the owner must file affidavits and proof they have continuously used the trademark after five years have passed from the date of registration. Two affidavits and more proof of continuous use are due between the 9th and 10th year after the date of registration and every 10 years thereafter. It is important to remember, that the trademark owner must prove they are using the exact same trademark that they registered – small changes in the appearance of the mark can result in large problems maintaining the registration.
The Applicant has a limited ability to amend their application after it is filed and fixing a number of problems can mean refiling the application. Better to have an experienced professional make sure the application is filed correctly from the beginning.