Dealing with the U.S. Patent and Trademark Office

How can you deal with the federal government bureaucracy and successfully maneuver the mechanisms of registering trademarks and service marks with the U.S. Patent and Trademark Office (PTO)?

There are two types of rights involved with a mark: the right to register the trademark and the right

to use it. The first user, or the first one to file an application, generally has the right to register that particular trademark. Usage rights are sometimes more complicated, especially if there are other entities that have used the same or similar marks. There are legal remedies to clarify rights´ issues and you should consult an attorney if there is any question about trademark conflicts.

There are three classes of registration. If you are already using a trademark in your business, you can register a "use" application. Second, a business that has not yet begun to use a trademark but intends to use it can file an "intent-to-use" application. Third, an applicant from outside the country may file for registration based on an application in another country.

The trademark filing is divided into four parts: the written application (which includes specific information about the applicant and trademark), a drawing page (which includes a representative drawing of the mark), fee payment (check or money order) and three specimens or actual samples (which show the mark in use).

No applicant is required to conduct a search for conflicting trademarks before filing an application, but it is the prudent way to proceed. There are law firms specializing in trademark searches and some online resources that can provide a first step in this direction. Basically, an expert in the field conducts a search of pertinent records for any conflicting marks.

Once an application has been filed, the PTO reviews it to determine if the public would be confused and/or whether consumers would wrongly associate one party´s goods or services with those of another party. To constitute a conflict, the marks do not need to be identical; nor do the goods and services have to be the same.

Applicants or their agents can search records from the PTO library in Arlington, Va., or one of the patent and trademark depository libraries located in various cities across the country. Information is cataloged and stored at these facilities on CD-ROM. There are private trademark search companies and attorneys who specialize in this type of work. Look for local providers in the yellow pages or do an online search.

After receiving the application, an examining attorney will review the application to determine if the mark can be registered. If, for any reason, the mark cannot be registered, the PTO will advise the applicant with a letter (or by phone if the objections are minor) explaining the denial. There are internal mechanisms at the PTO for appeal of any decision.

If there are no objections, the mark can be approved for publication in the Official Gazette, the PTO´s weekly publication. Afterward, there is a 30-day period for opposition to be raised. If the period passes without opposition, the PTO will register the mark and issue a registration certificate. This can take up to three months. There is a different timeline for "intent-to-use" applications and applications from outside the United States.