Trademarks

Applications that pass this first stage are then reviewed by an examining attorney at the PTO, who determines if there are any reasons why the mark cannot be registered. A mark may be turned down for any of the following reasons:

• The mark too closely resembles a mark already registered in the PTO.
• The mark's capacity for causing confusion among relevant consumers with goods or services associated with other parties.
• The mark includes a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his wife, except in instances where the widow has given her written consent to such use.
• The mark includes the flag or coat of arms or other insignia of the United States or any of its states or municipalities, or of any foreign nation, or any simulation thereof.
• The mark has immoral, deceptive, or scandalous connotations.
• The mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols.
• The mark brings such persons, institutions, beliefs, or national symbols into contempt or disrepute.

Objections raised during this stage of the review are sent along to the applicant. Remedies that might make the mark acceptable are sometimes suggested in these letters as well. The application will be deemed abandoned if the applicant does not respond within six months of the mailing date of that letter. In cases in which the applicant's response does not sway the PTO examiner to give approval for the mark, the applicant can turn to the PTO's Trademark Trial and Appeal Board.

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. At this point, anyone who believes he or she may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but it is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

If the application is approved and no opposition is filed, applicants may have a little or a lot to do, depending on their situation. For applicants who filed "Use" applications, most of the work is over. The PTO will register the trademark and issue a registration certificate a few months after the date the mark was published in the Gazette. Applicants who filed based on their intent to use the trademark down the line, though, need to attend to several matters to make sure that their rights do not slip away. In situations where it has approved an "Intent-to-Use" application, the PTO issues a Notice of Allowance approximately 12 weeks after the mark was published. After receiving the Notice, the applicant has six months in which to either use the trademark in commerce and submit documentation of that use or request a six-month extension. If the documentation of use—called the Statement of Use—is filed and approved, then the PTO will issue the registration certificate for the trademark.

Even if the PTO grants an applicant a trademark registration, business experts warn that such registration only provides protection to the owner in the United States and its territories. "If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws," warned the PTO in its Basic Facts About Registering a Trademark. "The PTO cannot provide information or advice concerning protection in other countries."

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