Intellectual Property Protection and Enforcement Manual - Ipr-policy.eu

Brand Protection Manual
of the mark and exclusive right to use the mark nationwide on or in connection with the goods or
services listed in the registration; (3) the ability to bring an action concerning the mark in federal
court; (4) the use of the U.S. registration as a basis to obtain registration in foreign countries; and
(5) the ability to record the U.S. registration with U.S. Customs and Border Protection (CBP) to aid
in the seizure of infringing or counterfeit foreign goods. 7 Protection for a registered mark exists as
long as the mark is properly used and its registration is maintained and renewed.
Applications to register trademarks can either be filed in hard copy or electronically via the Trademark
Office’s Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html. 8
Examination Process
Once a trademark application has been filed, the Trademark Office assigns a Trademark examiner
to review the application to determine whether the mark can be registered. During the examination
period, the examiner may issue “office actions,” raising specific obstacles to registration. Such
obstacles may be procedural in nature, for example, seeking a better description of the goods set forth
in the application, or they may be substantive. Substantive obstacles include refusals based on the
likelihood of confusion with a preexisting registered mark; the use of a name, portrait, or signature
of a living individual without consent; the inclusion of immoral or scandalous matter; or the fact
that the mark is either a generic term (which can never be registered) or is merely descriptive, that is,
would not be recognized by consumers as an indicator of source. 9
The applicant has up to six months to respond to an office action by presenting arguments to
convince the Trademark examiner that a refusal was in error. With respect to a descriptiveness refusal,
for example, the applicant can introduce evidence to show that the mark has “secondary meaning,”
that is, that based on exclusive use, promotion, and sales, consumers do, in fact, recognize the mark
as an indicator of source. If the Trademark examiner does not accept the applicant’s arguments, the
applicant can appeal the determination to the Trademark Trial and Appeal Board, which will make its
own determination of whether the mark should be registered. 10
If the application meets the approval of the Trademark examiner, or if the applicant is ultimately
successful on an appeal to the Trademark Trial and Appeal Board, then the mark will be published
for opposition in the Trademark Office’s Official Gazette in order to provide third parties with
an opportunity to oppose the registration of the mark. 11 If an opposition is filed, an opposition
proceeding commences. The proceeding is similar to, albeit not as complex as, a litigation in federal
court. The parties engage in discovery, with document requests and interrogatories, take depositions,
and, ultimately, submit their evidence and legal memoranda to the Trademark Trial and Appeal Board
for determination. Decisions of the board can be appealed to the federal court system. 12
If no opposition is filed, the mark will be registered, and the applicant will receive a certificate of
registration in due course. The applicant then becomes responsible for ensuring that the registration is
maintained by filing periodic statements of continued use with the U.S. Patent and Trademark Office. 13
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