Trademark Law

Overview of Trademark Filing Process

Initially trademark rights are obtained through USE of a mark to sell goods or services. However, if you don't register your mark, you might have limitations as you will only have what is known as common law trademark rights. Thus, most people and companies that use a mark should register it and gain the protections of federal registration.

The process of obtaining a federal trademark is a process, and not something you get by simply filing a trademark. The process is described on the USPTO website here:

Once you file the application, it is assigned to an examiner.  The USPTO has up to 6 months from the date you filed to either move your trademark along toward registration OR refuse the registration with a non-final office action.  If you get a refusal, you will have six months to respond.  Sometimes the refusal is because of something technical and is easy to fix.  Easy problems can be resolved by calling the USPTO examiner over the phone.  More difficult refusals can require a written legal brief that presents counter-arguments for the examiner to consider.

Once you file a response to your non-final office action, the examiner can agree with you and move your application along toward registration...or the examiner can issue a final refusal.  Once a final office action is issued, you can either request reconsideration or appeal the decision to the Trademark Trial and Appeals Board or T T A B.  At this point, you might need an attorney if you didn’t use one already when you received your non-final office action. 

If your trademark moves along to registration, either without any refusal or after you have overcome a refusal, there will be several additional steps.  All trademarks must be published for opposition for a period of 30 days.  Before this, the examiner approves the application for publication.  The application is then reviewed by a pre-publication committee to be sure that the examiner did not miss something.  Then the trademark is published.  The time from approval to publication can be several months. 

If the trademark is opposed by a third party, then you will probably want to talk to an attorney, if you haven’t already. 

Many times a trademark is caught by a third-party who MIGHT oppose the mark, but instead of filing an opposition, they file an extension of time to oppose it.  This gives the third-party up to 90 days to decide whether to oppose the application or not.  Many times, a large company will extend time to oppose a mark, but then let it go through without opposition.  In other cases a party might file the extension of time to oppose, and then contact the trademark owner to discuss a resolution, and avoid an outright legal battle. 

If the mark is unopposed, then it moves to one of two stages.  If the application was filed based on use, then it moves to registration.  If the application was filed based on intent to use, then it moves to what is called “allowance.”  An “allowed” trademark is one that is ready to be registered, but will not register until the mark is put to use.  Once you use the mark in commerce, then you let the USPTO know by filing a statement of use (which requires a fee) and you submit a specimen that shows your actual use of the mark.  Once the statement of use is filed and the fee paid, the mark moves to registration. 

But, what if you filed based on intent to use the mark, and you have NOT used it by the time the application is allowed?  Good news. You can pay a fee and file an extension of time to file the statement of use.  You can actually file up to 5 extensions, and each extension gets you an additional 6 months before you must file your statement of use.  That means you have 3 years from the time your application is allowed before you actually must put the mark to use in commerce.

This gives trademark owners a very long period of time before their product must be in use.  But, it also presents a problem.  The problem is: How do you remember to file all of those extensions?  That’s what Trademark Bank helps with. Trademark Bank sends you reminders before each date and also shows you what’s due in your My Trademarks panel.  The USPTO does send you an email each time you file an extension, confirming that it was accepted, but you will not receive any reminder from the USPTO before the due date to file your statement of use, nor letting you know that you can file another extension. 

What happens after your trademark is registered?  Is that the end of the process?  Actually, it isn’t!  In order to keep your trademark alive, you must do periodic maintenance filings and pay renewal fees.  The first renewal period is between the fifth and sixth year after the registration issues.  You must file a renewal and show that you are currently using the mark.   This is called the Section 8 renewal.  At the time of the first section 8, you can also file a declaration that makes your mark incontestable.  This is called the Section 15.  Thus, between the fifth and sixth year you should file a combined Section 8 and 15, which you can do online with the USPTO. Trademark Bank will remind you of these renewal deadlines as well!

Important Dates Regarding Your Trademark

If you’ve never filed a trademark on your own, you’ll probably be surprised to discover that you don’t just get a trademark registration in the mail a few weeks later. Obtaining a trademark registration is a process, and it can take anywhere from 8 months to two years. From the time you file until the mark registers, there may be several deadlines that you need to attend to, and you may not get more than one notice from the USPTO. Trademark Bank exists to help you navigate the process, and to avoid missing a critical deadline, by providing you with the information you need to understand the process, calendar your deadlines and monitor the progress of your trademark application.

Trademark vs. Servicemark

“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof –
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown . . . .
We often just refer to both as a “mark”
The rights are no different between trademark (goods) and service mark (services)


Trademark Law Sources

Protected under Federal and State Law
Federal Law – focus in this class
Protected under the Commerce clause, not the Patent and Copyright clause, of the U.S. Constitution
Lanham Act, §§ 1 et seq. (15 U.S.C. §§ 1051 et seq.)
State Law
E.g. California Business and Professions Code, §§ 14200 et seq.
Copyrights vs. Trademarks?
Patents vs. Trademarks?


Where do trademark rights come from?

Rights arise from use at common law
State statutes provide state protection
Federal statute (Lanham Act) provides registration scheme and benefits
Rights are not created by registration, but by use
Registration confers additional benefits
Presumption of ownership
Presumption of the right to nationwide rights
Federal Court
Remedies: injunction, damages, attorneys’ fees


You are starting a business and want to adopt a new name....what next?

Can I use the mark is the first question. Not whether you can protect it.

First, will it create infringement risk; second, will it create protectable IP, and if so, third, how can it be registered or protected?

How do you address the first step: will your use create an infringement risk? 

Apply these to see if your proposed mark is likely to be confused with a prior mark:

Strength of the mark
Proximity of the goods
Similarity of the marks
Evidence of actual confusion
Marketing channels used
Type of goods and degree of purchaser care
Defendant’s intent in selecting the mark
Likelihood of expansion of product lines
There are other factors. This list is nonexclusive, but a good basis for most analysis.

These are the same factors you would apply if you later find that a new user is infringing YOUR rights in a trademark. The factors vary from circuit to circuit, but are generally similar in approach. 

How long will it last? As long as you use it.