Additional Trademark Application Services Focus 

Once a trademark application is filed with the trademark office, a trademark examiner will be appointed to exam the application for compliance with specific laws and rules. The most common reason to refuse the registration of a trademark application is a “likelihood of confusion” between the applicant's mark and the registered or applied for mark of another party. In other words, the trademark examiner makes a decision that your newly filed mark would conflict with an existing filed or registered third party mark. Such "likelihood of confusion" generally exists when both marks are (i) similar and (ii) consist of related goods and/or services such that consumers would mistakenly believe they derive from the same source. The trademark examiner will consider the following when deciding whether a likelihood of confusion exists between two marks:

The similarity of Marks: As a part of the likelihood of confusion exists, the marks are first examined for their similarities and differences. Note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar. The similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services. The following would be considered similar:

• Sound: If the mark's sound is too similar, even if spelled differently;

• Appearance: Do the marks look similar, even if in a different font;

• Meaning: Do the marks have the same meaning, even in a foreign language; and

• Commercial Impression : Do the marks create a similar overall commercial impression, regardless of words or designs. 

Relatedness of Goods and/or Services: Assuming the examiner finds that the similarity of the marks is confusingly similar, a likelihood of confusion still will not be seen unless the goods and services are also related in some fashion. Although this process is somewhat subjective, the examiner looks at whether there is: i) a relationship between the goods and/or services identified in the applications being compared; and ii) a likelihood that consumers may be confused as to the source from which the good and/or services are derived. Thus, it is not whether the actual goods and/or services will be confused for one another but, rather, whether a likelihood of confusion would exist regarding the source of the goods and/or services.

Strong Versus Weak Marks: It is always in your best interest to seek a strong fanciful mark that is  descriptive of your goods and services. A strong distinctive mark enables you to prevent third-party use of your mark; however, marks that are merely descriptive or "weak" may not be protectable, and enforcing them could be costly.

Steps To Register A Trademark With The Trademark Office

Step 1 - The Trademark Application: 

The process of registering a trademark begins with the preparation and filing of the application. The trademark application consists of a drawing of the sought trademark, the area of commerce to which the mark applies, and a specification of the applicant's domicile and citizenship. If the mark is already in use at the time of the application, the application must also include the date of the applicant's first use of the mark and the date of the applicant's first use of the mark in commerce. The application must also be supported by a verified statement by the applicant, specifying that the applicant is believed to be the owner of the mark; that the application is true and correct to the best of the applicant's knowledge; that, to the best of the applicant's knowledge, no other person has the right to use such mark or substantially similar mark or, in the case of concurrent use, that certain exceptions are claimed and met by the applicant; and, that the mark is in use in commerce or that the applicant has a bona fide intention to use the mark in commerce.

Step 2 - The Office Action: 

Once the application has been submitted to the USPTO, and the USPTO verifies that all minimum filing requirements are met, an examiner is assigned to the application to determine whether registration of the mark is permitted by Federal law. The examiner reviews the application to ensure that all refusals and requirements are satisfied. Suppose refusals or requirements must still be satisfied. In that case, the examining attorney assigned to the application will issue a letter, known as an Office Action, to the applicant stating the refusals and/or requirements that need to be satisfied. The applicant then has six months within which to respond to the Office Action and to satisfy or overcome each of the refusals and requirements listed. If the applicant's response displeases and/or overcomes all of the refusals and requirements, the examiner will issue a Final Office Action, making any outstanding refusals or requirements final. The applicant may respond to a Final Office Action by either overcoming the refusals and complying with the requirements or by appealing to the Trademark Trial and Appeal Board (TTAB). 

Step 3 - The Publication: 

If the examiner finds all requirements and refusals to be met and satisfied by either the initial application or by the response to any office action, or the TTAB determines an appeal in the applicant's favor, approximately one month thereafter, the mark is published for a thirty-day (30) period in the Official Gazette (OG), a weekly publication notifying the public of marks to be registered. The purpose of the publication is to allow any party who believes its interest would be harmed by registering of the mark the opportunity to file an opposition to the registration with the TTAB.

Step 4- The Notice of Allowance and Statement of Use: 

If there is no opposition to the mark or any opposition thereto is resolved in favor of the applicant, and the mark was not in use in commerce at the time of the initial application, the USPTO will issue a Notice of Allowance (NOA) to the applicant. An NOA indicates that the mark is not registered as of yet but will be registered after the filing of an acceptable Statement of Use (SOU) within six months of the issuance of the NOA. An SOU is a statement by the applicant specifying how and when the applicant used the mark in commerce. The filing of an SOU initiates another period of examination to ensure that all requirements have been met; During this period, the examiner can again issue Office Actions to facilitate the satisfaction of all requirements.

Step 5 - Trademark Registration:

Once all requirements have been satisfied and all potential oppositions to the mark dismissed, the USPTO issues the mark's registration to the applicant. However, the mark is not secured by the registration indefinitely and will require maintenance fees.

Step 6 - Trademark Maintenance:

The registrant of a trademark must periodically file certain declarations regarding the mark's continued use to keep the mark "live" and prevent cancellation. This includes the payment of periodic maintenance fees.