This section breaks down USPTO trademark examination and provides an in depth look at a USPTO office action.
Topics covered in this section:
The USPTO assigns a trademark examining attorney, after you submit a trademark application. The examination follows the Trademark Manual of Examining Procedure (TMEP). The USPTO makes an online version of TMEP available to the public for free.
TMEP is a go-to resource for all applicants because it informs how the examiner will go about examining your application.
The USPTO published a timeline to assist in understanding the application timeline.
The following is a timeline for a 1(a) application:
After trademark application submission, the examining attorney reviews the application (Step 2 above). The timeline branches in two ways.
The first branch in the examination timeline is whether the office issues an office action. The second branch is publication.
An office action is a formal correspondence from the USPTO examining attorney noting issues with the application. The applicant must overcome the issues in order for the application to proceed.
Office actions are sent to the applicant and/or the attorney of record and are posted via TSDR as public record.
An office action must be responded to within six months and must address and overcome each issue raised by the examiner.
Office action issues raised by the examining attorney are generally divided into technical and substantive issues.
Technical issues relate to the requirements of a USPTO trademark application. These issues are generally easier to overcome and the examining attorney usually includes suggestions for how to overcome these application deficiencies.
For example, as you’ll recall from the discussion of trademark applications, evidence of use in commerce is required to meet the registration basis for a domestic trademark application.
This evidence comes in the form of specimens of the mark used with the goods and/or services. If an application includes an illegible specimen, then the examining attorney will issue an office action noting this technical deficiency.
Substantive issues relate to whether the substance of the application is sufficient to proceed with registration. These issues become quite complicated and almost always should be assessed by a trademark lawyer because they require substantive legal analysis and arguments to be made in response.
For example, the examiner might search the USPTO database and find another mark that is confusingly similar to the applicant’s mark and issue an office action. This would require a substantive legal argument to be made countering the analysis and conclusion of the examiner.
If the applicant responds to an office action but fails to properly address or overcome the points raised then the examiner will send a subsequent Final Office Action, and a failure to respond adequately will result in the abandonment of the application. It is possible to appeal issues raised by an examining attorney to the Trademark Trial and Appeals Board, however, these proceedings are much more akin to litigation than trademark registration and might require a whole Ultimate Guide in and of itself!
Let’s take a closer look at an office action. Even though all office actions are public, identifying information has been redacted in this example.
The heading of an office action contains application information such as the serial number, the mark, and correspondent and applicant information. The office action links to TSDR to view the submitted application on TSDR or access Office Action Response Forms.
The issue date is just below the heading. This is very important because applicants have six months to respond to the office action.
The office action then lists a summary of issues found by the examiner.
In this example office action, the examiner found several issues, including a mix of technical deficiencies and substantive issues.
Issues such as Disclaimer Required, Specimen Illegibility, and Description or Color Claims are all technical deficiencies. Technical in that they are issues with the application.
However, Section 2(d) is a substantive issue where the examiner has determined the mark is confusingly similar with other trademarks registered with the USPTO. Since substantive issues generally require complex legal arguments, we next focus on a technical deficiency, inadequate specimens.
This is a great example of a common and somewhat complicated technical deficiency. As you’ll recall, in order to demonstrate that a mark is in use, applications require specimens, or evidence that the mark is in use with the goods and/or services applied-for.
Citing the Trademark Manual of Examining Procedure (TMEP) and the Trademark law itself, the examiner has determined that the submitted specimens are “unreadable or illegible.” Since the specimen is insufficient, the application fails to show the mark in use in commerce. The examiner continues that in this case, the examiner couldn’t make out the word mark on the specimen.
The examiner then provides information on what specimens would suffice as well as instructions to respond to this particular issue. This issue can be overcome by submitting a better copy of the specimen, submitting a substitute specimen, or amending the application to a 1(b) application (which you’ll recall is an intent to use application and thus does not yet require a specimen because it isn’t in use in commerce).
Office Actions are signed by the examining attorney and include the examiners phone number and email address.
Finally, the office action specifies how to respond. Note that “[a]ll informal e-mail communications relevant to this application will be placed in the official application record.”
Any applicant who receives an Office Action is strongly encouraged to speak with a trademark attorney as soon as possible. Responses are required within six months and as is the case with substantive issues, it might require some time to prepare a sufficient legal argument.
For some more information on office action responses check this page out.
After examination (or a sufficient response to an office action) the application will be sent to publication by the examiner (as seen in steps 3a, 5a, and 7a above).
Trademark publication is the placement of an applied-for mark on the Trademark Official Gazette. The public has thirty days to oppose the registration of the trademark.
If an opposer wishes to file an opposition they may receive an additional thirty to ninety days to file a complaint or Notice of Opposition, with the Trademark Trial and Appeal Board, which commences formal opposition proceedings. Further, the Trademark Manual for Examining Procedure lists the following regarding oppositions. Consult with a trademark lawyer if your application receives an opposition. Lastly, oppositions are litigation-like formal proceedings and opposers are often lawyers representing another trademark owner.
After publication, within about eleven weeks, the application will be formally registered on the primary register of the USPTO. A registration certificate will be issued and sent to the applicant, the attorney of record, and posted on TSDR. At this point, the applicant can now begin using the (r) symbol with the trademark to put the public on notice that the mark is federally registered.
The USPTO suggests regularly monitoring the status of the trademark on TSDR and to be sure to maintain accurate address and email information. Further, file periodically to maintain registration, usually by showing a continued use in commerce. The USPTO provides some post-registration resources here, which include filings under Section 8, 9, and 15.
Between the fifth and sixth year after registration, the owner has to file a Declaration of Use and/or Excusable Nonuse. This filing confirms that the trademark continues to be in use in commerce for the goods and/or services registered-for or that the trademark is not in use but there is a basis for excusable nonuse.
For more information on Section 8 filings check here.
Every ten years, the owner has to submit a combined Section 8 and Section 9 filing. This filing combines the Section 8 filing mentioned above with a renewal application, or a request to keep the registration active for the next ten years.
For more information on Section 9 filings check here.
After five years of use, the owner may file a Section 15 filing, also known as a Declaration of Incontestability. The Section 15 filing can be combined with the Section 8 filing mentioned above.
What is an incontestable trademark?
An incontestable trademark is not truly incontestable. An incontestable trademark receives an additional layer of protection, including a presumption of validity in the event of opposition.
For more information on Section 15 filings check here.
What Happens During Trademark Examination