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Trademark Law 101: Everything You Need to Know About Trademark Registrations

January 26, 2016 — Leave a comment

Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.

In this post we will cover a lot of ground and focus on the six topics below.

  1. Trademark Law
  2. Don’t Pick a Generic or Descriptive Mark
  3. Researching Trademarks
  4. Trademark Applications
  5. Post-Application Filings
  6. Post-Registration Filings

1. Trademark Law

A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.

To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.

Read More:

2. Don’t Pick a Generic or Descriptive Mark

When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.

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3. Researching Trademarks

Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.

You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).

Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.

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4. Trademark Applications

When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.

We’ve covered all of those topics a lot on this blog. Read more about them at the links below.

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5. Appealing a Denial

After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.

Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.

If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”

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6. Post-Registration Filings

If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.

Read More:

That’s A Lot! But Mighty Marks® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.

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Image: Adobe/Rawpixel.com
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

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Spam Following Trademark Application

November 24, 2015 — 1 Comment

You’ve filed your trademark application with the United States Patent & Trademark Office (USPTO) and all of a sudden you start getting emails and physical mail regarding your trademark and you might start to wonder how you are supposed to keep up with all of the filings and fees.

Well, the good news is you don’t have to keep up with all of those mailings. The bad news is, it is mostly spam.

Here’s what you need to know.

Information in Your Application is NOT Confidential

Your application will be publicly available. Anyone can access the USPTO’s database and read your application and mine your application for your information. As a result, many companies in the U.S. and abroad have discovered they can automate the process and collect your contact information as soon as your application is filed. As a result, they know who you are, where you operate, and more importantly, they know information about the trademark you are seeking to register.

Mailings You Might Get

Pretty quickly after submitting an application, you may receive one or more of a number of different types of emails or physical mailings. These mailings will offer a wide range of services from legal services to trademark monitoring services, recording services with other agencies, and recording services with foreign offices. Some of these are valuable services you may want to purchase. But many of them are not valuable and you should not purchase them.

They Are Probably Not Official

Although the mailings may look like official USPTO documents, they are probably not. For instance, many will include names including “United States,” “Registration Office,” “Agency,” or the like and further, many will use formats that look like official USPTO documents. They will probably also have unique information about your application like the mark, the serial number, the application date, and your contact information. But remember, all of that is public so just because that information is on a mailing, it doesn’t make it official.

How To Spot Official Documents

Here’s the good news. Official documents and communications from the USPTO will always come from one of two places. First, if physical, the documents will come from the “United States Patent and Trademark Office” in Alexandria, Virginia. And second, if by email, the documents will come from an official “@uspto.gov” domain.

If the documents arrive from any other source, you can almost certainly conclude they are not official.

What If You Were Duped?

From time to time people make mistakes and send money to one of these third-parties by mistake. If this happens to you, you should seek a refund from the third party and, more importantly, notify the USPTO and also the Federal Trade Commission. You might also consider contacting a state official in your state regarding the misleading business practice.

The Best Course of Action

Without a doubt, we think the smartest thing you can do is seek help from a competent trademark attorney. He or she can help you with your application (which is a big deal itself) and also with determining what communications you should take seriously after you file your application.

And of course, if you want to file a federal trademark application with the USPTO, we recommend you check out MightyMarks.com where we can help you unleash the power of a federal trademark.

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Image: Adobe/d.c.photography
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Understanding the USPTO’s Trademark Application Options

October 1, 2015 — 1 Comment

When applying for a use-based federal trademark online with the United States Patent and Trademark Office, or USPTO for short, you basically have three options: the TEAS Regular application, the TEAS Reduced Fee application, and the TEAS Plus application. (TEAS stands for Trademark Electronic Application System.) Understanding which to file is an important decision.

TEAS Regular

A TEAS Regular application is the standard application. The filing fee is $325. Generally speaking, this is just a paper application process that starts online. When applying under this application, you don’t have to agree to use the internet for subsequent filings, you don’t have to supply an email address, and you can use custom information. For example, you can create your own unique goods/services description when applying.

TEAS Reduced Fee

As the name suggests, the TEAS Reduced Fee application is cheaper. It is only $275. Sometimes referred to as the TEAS RF, this application has additional requirements. Specifically, you must include an email address and you must agree to receive official application notices from the USPTO via email. Further, you must agree to file follow up filings using the TEAS platform also. However, like the TEAS Regular application, you don’t have to use a pre-approved goods/services description when submitting your application.

TEAS Plus

The TEAS Plus application is the cheapest option. It costs just $225. However, you must comply with additional requirements. Much like the TEAS RF application described above, you have to include an email address, agree to receive communications via email, and agree to use the TEAS system for subsequent filings. Additionally, you must use one of the USPTO’s pre-approved goods/services description when applying.

Of note, this application is somewhat new, appearing for the first time in early 2015.

$50 Processing Fee

You should note that if you elect to apply under one of the cheaper applications described above, you need to make sure you comply with that application’s rules. For example, if you apply under TEAS Plus but try to use a non-pre-approved goods/services description, or if you try to use a paper form, then you may be assessed additional fees. In particular, the USPTO will charge you $50 per class of goods/services for such a violation.

How do you pick?

If you are trying to decide how to apply for a federal trademark registration with the USPTO, your best bet is to speak to an attorney that has experience filing trademark applications. He or she can advise you on your ability to register your mark and if you decide to move forward, your trademark attorney can advise you on the best application to use.

In most situations the new TEAS Plus application is a great option to help you save money and to speed up the process. But sometimes you are better off using one of the other options.

Need help?

If you want help, Mighty Marks® can help you. We apply for trademarks all the time. Learn more at www.mightymarks.com.

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Image: Adobe/alexskopje
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Confusingly Similar Trademark Applications

April 28, 2015 — Leave a comment

As we have highlighted on this blog before, you should always perform a trademark search before applying for a trademark. There are many reasons for this, one of which is because you don’t want to waste time and money applying for a mark if someone else already registered your mark or another confusingly similar mark.

If your search reveals that someone else has such a registration, you have several options.

First, check the goods and services associated with the registration.

If the goods and services is for faucets and you want to operate an airline, you are probably ok. That is because consumers won’t be confused into thinking your airline is associated with the faucet manufacturer. Figured it out yet? We’re talking about Delta. Delta airlines is rarely confused with Delta faucets, therefore registrations for both would likely be allowed by the USPTO.

(There are some limits to that for famous marks. For example, you probably can’t use “McDonalds” for any reason, even to sell computers, simply because of how famous their mark is in the eyes of consumers.)

Second, you might be able to keep using your mark, even if the goods and services are the same.

As we’ve said before, trademark rights stem from use in commerce. If you’ve used your mark in your hometown for years and someone else obtains a USPTO registration of your mark because they use it too (on the other side of the country), that doesn’t necessarily mean you have to stop because you used it first.

However, it probably means you can’t expand too far. You might be able to expand to a neighboring city, but your rights to expand nationwide would be much more limited. This is why you should always seek registration when you can!

Third, pick a new mark.

This is sometime easy (for new companies) and sometimes really hard (for old established companies).

If this is an option for you, it is often a simple way to fix the potential confusion that may result from two similar names.

Lastly, get permission!

Although this is not always an option, it might work in your case. We’ve seen it work before.

Look up the owner of the registration in the USPTO database. Do your research. And if you find that confusion is unlikely, you can contact them and ask them to write you a letter (which you might write for them to sign) that says they consent to your registration of your application. You can then submit that electronically along with your application and the USPTO will accept that and allow your mark to be registered (pending other reviews of course).

What Next?

Talk to an attorney!

While an attorney isn’t always necessary in the trademark world, these are tricky issues and you should seek the advice of a trademark attorney before proceeding with these matters. They can help you in many ways.

If you have questions, you can learn more on our website, www.mightymarks.com, and you can contact us if you have specific questions!

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Image: Thinkstock/RomoloTavani
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Trademark Application Roundup

April 14, 2015 — Leave a comment

Our last post provided a solid recap of trademark law and provided links to various blog posts we’ve written over the last year with respect to trademark law.

This week, we want to do another roundup. This time though we will focus on trademark applications and how to get your mark protected by the United States Patent and Trademark Office!

First, you should always perform a trademark search.

In order to obtain a federal trademark registration you have to certify that you have the right to the mark for which you seek protection. The USPTO will also search its database to see if there are any conflicting marks.

To help, it is always a good idea to perform a trademark search. You can read more about that in this post, How to Perform a Trademark Search, and lean why an attorney can is helpful with searches in this post, The Benefits of Using an Attorney to Conduct a Trademark Search.

Second, sometimes you need a trademark attorney, sometimes you don’t.

Once your search is complete and you are ready to apply, you have a lot of options.

Many times you need an attorney, but other times you don’t. We covered that in our post Do I Need an Attorney to Trademark My Business Name.

If you want to talk with an attorney, we also have tips on How to Find & Hire a Trademark Attorney.

Third, how to file a trademark application.

Now you are ready to file your application.

If you are going it alone, you should check out this post, How to File a Trademark Application Without an Attorney.

You should read that post even if you are using an attorney because it will help you understand the process.

In the process, you’ll have to submit a specimen of use. This provides the USPTO with evidence that you are actually using the mark in commerce. You can learn more about this in our post How to Find a Good Trademark Specimen.

Fourth, what to do if your mark is denied.

Lastly, remember that many applications are denied. You might be denied for failure to submit a good specimen, or perhaps you checked a wrong box. Other common reasons include the descriptive nature of your mark and also possible confusion with other existing registrations.

Regardless, you should read our post What You Should Do if Your Trademark Application is Denied to learn about what to do next.

As we said in our last post, we are excited to continue covering trademark law and offering innovative trademarking services online. If you want to seek trademark protection for your mark, please check out our website, MightyMarks.com to learn more!

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

We’ve been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Sealtight vs. Sealtite: A Trademark Battle in the Supreme Court

December 9, 2014 — Leave a comment

As you may recall from other posts on this blog, trademark laws grant a trademark owner the exclusive right to use their registered mark in commerce with respect to specific goods or services. Those rights extend not only to other people or companies using their exact registered mark, but also to uses of marks that are “confusingly similar” to the registered mark. The USPTO uses this rule to deny marks that, although spelled differently, are pronounced the same.

However, due to rulings in the Federal Courts (which are separate from the USPTO), the Supreme Court has decided to weigh in on this issue via the Sealtight Case.

Background

B&B Hardware sells self-sealing, leak-proof screws and bolts for use in high-tech industries such as the aerospace and medical industries, under the name Sealtight. B&B obtained a registration for this mark in 1993.

Hargis Industries, on the other hand, sells construction screws for buildings under the name Sealtite Building Fasteners.

When Hargis applied for a federal trademark for Sealtite in the late 90’s, B&B objected arguing the use of Sealtite would cause consumer confusion between the two companies and their product lines. The USPTO Trademark Trial & Appeal Board (“TTAB”) agreed with B&B and denied the registration by Hargis.

However, Hargis has argued that its’ products are different from those sold by Sealtight and that Hargis’ customers are a different class of customers. Hargis has even won two jury verdicts in U.S. Federal Courts on this point. One judge even found that B&B attempted to manufacture evidence to bolster it’s trademark infringement claims.

With a split between the Federal Courts and the TTAB, the U.S. Supreme Court agreed to hear the case and decide who should have the final say on this matter.

The Supreme Court Hearings

The Justices heard an hour long oral argument last week on the issue.

Justice Sotomayor said that it only makes sense that the USPTO proceedings should be given some weight in Federal Court cases otherwise the agency’s powers would be rendered “almost irrelevant.” And the Obama administration argued in favor of B&B by claiming that the Federal Courts should defer to the USPTO on such matters.

However, Justice Ginsburg (along with some other Justices) showed some signs of agreement with Hagis. For example, Ginsburg made statements that implied that the USPTO proceedings might not have controlling effect in Federal Courts because the stakes in such cases are much higher than the stakes at the TTAB level.

As a result, it is not clear how the court will rule on this matter. The one thing we do know is that a decision is likely to be announced in June.

What This Means for You

The outcome of this case will almost certainly impact future trademark disputes. And the most important thing for you to take away from this current dispute is the importance of using appropriate guidance and assistance when dealing with trademark matters.

If you want to keep up with trademark law and learn how Federal registration can benefit your business, be sure to subscribe to Mighty Updates, the MightyMarks® email newsletter!

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Image: Thinkstock/Willard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to File a Trademark Application Without an Attorney

October 28, 2014 — 1 Comment

We recently wrote about whether you need an attorney to file a trademark application and we said that, while there are many reasons to use an attorney, some businesses decide to go it alone. This week we want to offer a streamlined walkthrough of how to file your own application. We will cover the most important parts of an application here, but note that there are many more options that you might consider when filing out the application.

*And like in our other post, we want to emphasize that is is almost always a good practice to use an attorney to file your trademark application. You shouldn’t rely on this post as a replacement for an attorney!

Prep Work

Before even starting the application, you should conduct a trademark search to make sure you have the proper rights to obtain a registration in the first place. For this, we recommend our post “How to Perform a Trademark Search.”

You will also need to find in which International Class your goods or services will belong and also one or more suitable descriptions of your goods or services. The IC list is available here and the previously approved descriptions are available here. While you are not required to use a previously approved description, doing so can reduce the cost of your application and also increase the likelihood of an approval in the first attempt.

How to File

When you arrive at uspto.gov, navigate to the application labeled “Trademark/Servicemark Application, Principal Register.”

TEAS or TEAS Plus

If you are ok with digital communications, paying the fee up front, and using a pre-approved description, then you can save $50 by using the TEAS Plus application. If not, you must select the regular TEAS application. We will assume you choose the Plus application since that is most commonly used.

Mark Owner

The next substantial information you will enter is information on the owner of the mark. Note that if you have a business entity, odds are the entity should be the listed owner, not you as an individual. Also keep in mind that this information will be publicly available after you submit the application, which may impact the information you provide.

The Mark & Goods/Services

Next up is information about the mark itself and the goods/services you provide. You can insert an image if you are applying for a design mark, or you can just type in the mark if you are applying for a word mark. You can search for a pre-approved description at this step and once found, insert it into the application. If you choose a description with a fill-in-the-blank option, you need to complete the description at this step also.

Filing Basis & Specimens

If you are already using the mark in commerce, then you can now select Section 1(a) as your filing basis. If not, you can choose Section 1(b) to indicate that you intend to use the mark within 6 months of the application’s approval. Assuming you selected 1(a), you must now submit a specimen of use. If you need help finding the right specimen of use, see our post “How to Find a Good Trademark Specimen.” You will also need to describe the specimen and provide information on when the mark was first used “anywhere” and when it was first used “in commerce.”

Signature & Submission

After assigning the filing basis and clicking continue, you can then pay the fee and sign your application. Follow the signature instructions exactly, or it won’t let you proceed.

The Waiting Game

Next up is the waiting game. You will likely have to wait about three months before getting a response from the USPTO. In the meantime, you may receive some official communications from the USPTO further describing your mark or asking for clarifications. You will also likely receive unofficial communications from third parties seeking to help you along in the process. Remember to pay attention to the sender of these communications. If they are from the USPTO, then they are official. Anyone else, and they are likely advertisements from third parties.

If your application is denied, be sure to check out our post “What You Should Do If Your Trademark Application Is Denied.”

Need Help?

While some people prefer to file on their own, many more seek the advice and assistance of a licensed attorney to help them through the process. If you would like assistance, check out our application package which only costs $495 at mightymarks.com.

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Image: Thinkstock/LiudmylaSupynska
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to Find a Good Trademark Specimen

July 22, 2014 — 2 Comments

When you file for federal trademark protection with the U.S. Patent and Trademark Office, you must file a Specimen of Use. This is because you may only protect marks that you actually use in commerce (or in some cases marks that you intend to use in the near future). However, the issue of what constitutes an acceptable specimen of use is sometimes confusing. In this post we will help to clarify what you should, and should not, file.

Specimen Defined

The USPTO states that a specimen is “a sample of how you actually use your mark with the goods and/or services identified in your application.” Typically that means the USPTO wants to see how you use the mark in commerce and how a consumer is likely to see your mark on the goods or associated with the services. As you might have picked up, there are different requirements for usage on goods versus usage for services.

Specimens for Goods

When applying for a mark associated with the sale of a particular good, the USPTO will require a specimen attached to the actual goods itself. That means a shirt tag, on the packaging, or sometimes on a promotional stand or window display. Copies of invoices and other marketing materials are usually not sufficient.

The USPTO maintains a large list of acceptable specimens for goods and they include in that list product labels, product packaging, product display signage, and screenshots of websites where the goods may be purchased.

Specimens for Services

Since services are often intangible, the specimen requirements for service mark applications are a little easier to satisfy. Typically the USPTO will require a specimen that shows how the mark is used in the “sale, rendering, or advertising of the services.” The key is to use the mark in close proximity to the services performed.

The USPTO’s list of acceptable specimens for services include advertising materials, brochures, restaurant menus, business cards, and business signs.

Specimen Refusal

If you submit an application with an improper specimen, the USPTO will likely send you an Office Action requiring you to submit a proper specimen. If your application is denied for this basis, it is important that you respond quickly so you don’t lose your application. If you have questions about your specimen you can also call the examiner that denied your application (their phone number will be on the Office Action).

You will then be required to submit a proper specimen that was in actual use on or before the date of your application. If you cannot do this, then your application will not get passed the examiner.

And remember, if you are confused about what constitutes a good trademark specimen, the attorneys at Mighty Marks® are ready to help you through the process.

Image: Thinkstock/darkovujic

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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What You Should Do If Your Trademark Application Is Denied

July 15, 2014 — 4 Comments

Unfortunately the U.S. Patent and Trademark Office denies a lot of applications. Sometimes the denial is a simple formality, other times it is more challenging. When the office denies an application it will issue an “Office Action” which is simply a rejection letter explaining the office’s reasoning for the denial. In this post we will cover some common reasons for a denial and what you can do to fix them.

Don’t Ignore the Office Action

The first thing to consider is the timing of the rejection. As soon as you receive an Office Action, you should place multiple notes on your calendar. The office will require a response within six months so you should place that date, as well as a couple reminder dates, on your calendar. If you fail to respond on time, you will lose your application.

Deficiencies; Disclaimers; Specimens

Many applications are denied for simple administrative type issues. Luckily, these are usually easy to fix, but not always. One example is a rejection due to confusion over who the applicant is. You should make sure it is clear whether you, or a registered business entity, is the owner/applicant.

Another example is when you’ve included a word that you may not protect. For example, in our example about Evan’s Coffee Shop, the USPTO would likely require the application to disclaim “Coffee Shop” because you can’t protect a descriptive term. However, you could still claim ownership of “Evan.”

Lastly, your specimens might be insufficient. You must submit specimens of use that clearly show the mark as it is connected to you, the source of the good or service. Specimen submissions can be tricky and we will cover that in a later post.

Descriptiveness

Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection. You will have to submit a document similar to a legal brief, hopefully including citations to case law, that explains your argument as to why the mark is not descriptive. This can be complex and you should seek legal counsel for these types of rejections.

Likelihood of Confusion

Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.

Again, you will likely need to submit a brief arguing why you believe consumer confusion is not likely. Perhaps the goods and services are sufficiently different, or perhaps the examiner’s conclusion is unreasonable. Regardless, this brief can be complex and this is another type of rejection for which an attorney’s assistance can prove important.

Be Proactive

The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.

That’s where we come in. We’ve filed a lot of applications and would be happy to assist you. Contact us today to learn about your trademark rights!

Image: Thinkstock/Aquir

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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