Search:

After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered. The USPTO advises applicants and/or their representatives to search the records before filing the application. A search may be conducted through TESS, or by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:30 p.m. at 2900 Crystal Drive , 2nd Floor, Arlington , Virginia 22202 . Use of the Public Search Library is free to the public. Also, certain information may be searched at a Patent and Trademark Depository Library. These libraries have CD-ROMS containing the database of registered and pending marks, and Internet access to the Trademark Electronic Search System (TESS). (However, the CD-ROMS do not contain images of the design marks.)

Secondary Meaning:

Secondary meaning arises when consumers have come to identify a trademark over time 15 U.S.C. §1052(f). “except as expressly excluded in paragraphs (a), (b), (c), (d), and (e)(3) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act.”

Section 8 Declaration of Continued Use:

A sworn statement, filed by the owner of a registration that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946),and 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Section 8 Declaration of Excusable Nonuse:

A sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration. Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

Section 9 Renewal Application:

A sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods. Trademark owners have a total of 18 months to file a §9 Renewal Application. The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.

Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled “Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9″.

Section 15 Declarations:

A sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065. Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

Service Mark:

A word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are often used to refer to both trademarks and service marks.

Source of Origin:

Trademark indicate source of origin. Consumers buy goods or obtain services under a trademark or brand name because they expect to receive a certain quality of goods or performance. It is this assurance or expectation of repeatability of quality that causes customers to return. Consumers feel at ease buying a nationally-known product having a trademark from the dealer which offers the lowest price because they expect consistent quality.

State Trademark:

All of the states have trademark laws. There is a uniform state law that many states have adopted. Other states have trademark laws with their own spin. The state registration process is not very substantive and the rights generally granted are not any more significant than what the party possessed at common law. Also, since there is no examination except for form, validity is left for the courts.

Statement Of Use:

(SOU) – a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With a statement of use, the owner must submit: (1) a filing fee of $100 per class of goods/services; and (2) one specimen showing use of the mark in commerce for each class of goods/services. Statements of use must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

Standard Character Format:

An applicant may submit a standard character format representation of a mark if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does not include a design element.

Stylized Mark:

One type of depiction of the mark sought to be registered. Another name for this type of mark is “special form.” If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. Therefore, applicants must select the “stylized or special form” mark format when applying for these types of marks. The representation of the mark’s page should show a black and white image of the mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

Subsequent Designation:

A request by the holder of an international trademark registration for an extension of protection of the registration to additional Contracting Parties.

Substantive Reasons For Refusal:

There are several substantive reasons for refusing registration of a mark. These include: likelihood of confusion; primarily merely descriptive or deceptively misdescriptive of the goods/services; primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services; primarily merely a surname; or mere ornamentation. This is not a complete list of all possible grounds of refusal.

Suggestive Mark:

A mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services.

Supplemental Register:

Secondary trademark register for the USPTO. It allows for registration of certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services. Marks registered on the Supplemental Register receive protection from conflicting marks and other protections, but are excluded from receiving the advantages of certain sections of the Trademark Act of 1946. The excluded sections are listed in 15 U.S.C. §1094. If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the Office will presume that the applicant seeks registration on the Principal Register. To register a mark on the Supplemental Register, applicants must either be using the mark or filing under Trademark Act Section 44 based on a foreign registration.

Suspension Inquiry Letter:

An Office action inquiring as to the status of the matter that is the basis for suspension of an application. The examining attorney will issue a suspension inquiry letter after an application has been suspended for six months or more, unless the information is available to the examining attorney in the Office’s databases. If the applicant does not respond to the suspension inquiry letter, the application will be abandoned.

Suspension Letter:

Suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not need to respond to suspension letters.