15 Mar 2022
How to protect a trademark or patent from its illegal and unlawful use is a question of concern to many authors, inventors, and entrepreneurs worldwide. To sort out this issue of trademark infringement and protect a trademark’s copyright, a trademark requires to be on government record or any other trademark-related institution’s record. To protect a trademark from any misuse, it is necessary to register that particular trademark with the concerned government institutions for trademark registration. Several countries have introduced trademark registration laws in their jurisdiction to deal with all trademark-related matters, including registration of a trademark, resolving trademark infringement disputes, etc. Similarly, the United States of America (the USA) has established an agency, namely, The United States Patent and Trademark Office (USPTO), a USA federal agency that grants U.S patents and registers trademarks. The USPTO registers the trademarks based on the USA’s Constitution’s commerce clause (Article I, Section 8, Clause 3). The primary objective of USPTO advancement of effective Intellectual Property (IP) protection for the USA innovators and entrepreneurs globally in collaboration with other international agencies is to formulate strong Intellectual Property provisions in free trade and other international agreements.
The Trademark Act of 1946, as amended (the Act) of the USA, governs the procedure of trademark registrations under USPTO and has laid down an efficient mechanism for trademark registration. We will discuss the process and requirements for registration of trademarks under the USPTO; For registering a trademark, the trademark owner used in commerce can file an application requesting registration of his/her trademark on the principle register. In addition to the application trademark’s owner is required to pay a prescribed non-refundable fee for registration with the USPTO. Once the application is being filed, the USPTO issues a serial number to that application for the convenience of the trademark owners to check updates about the registration application’s approval online. It takes almost three months to get any answers regarding the application. If the registration application fulfills all the filing requirements, then the application is assigned to the examining attorney for reviewing and determining the registration of such a trademark is permitted under federal law or not. After going through the registration application screening and, if the attorney approves the trademark for being qualified to be registered, filed with a bona fide intention, and fulfills all legal requisites, it will be approved for publication in the Trademark Official Gazette (TMOG) of the USPTO.
The TMOG is a weekly online publication that gives notice to the public before registering a trademark about USPTO’s intention to register such and such a trademark. A trademark will be published in the TMOG almost one month after its approval. If the examining attorney refuses to register the trademark, he issues a letter (office action) with explanations of reasons for the application’s refusal and mentions legal requirements. The trademark owner shall respond to the office action within six months of the date it was issued. He is liable to remove all the reasons of refusal and fulfill legal requirements and the examining attorney’s satisfaction. After submission of a response to the office action, the examining attorney reviews the submissions. If the trademark owner in his response fails to satisfy the grounds of refusal and all other requirements, the examining attorney will issue a final refusal letter (final office action); against this letter owner of a trademark can file an appeal with the Trademark Trial and Appeal Board (TTAB). The owner must respond to the office action within six months; if the trademark owner fails to submit his response within the stipulated time, his application will be abandoned. USPTO will issue a Notice of Abandonment after the passing of six months. The application fee is not refundable. To start the process again, the owner is supposed to file a petition to revive his application within two months of receiving the Abandonment Notice, with the petition fee. Otherwise, he/she will have to file a new application with a new fee and all formalities again.
After the publication of the approved trademark in the TMOG, anyone who thinks that the registration of such trademark will harm his/her business can file an objection or opposition against the trademark within 30 days of its publication with the help of legal personnel. The proceedings regarding an objection/opposition shall be held before the Trademark Trial and Appeal Board (TTAB), comprised of administrative judges who review and decide trademark-related disputes. If no objection comes regarding the trademark within 30 days of its publication in the TMOG, after a period of three months, the USPTO office registers the trademark. Once the trademark is registered, the owner is required to file maintenance documents and other fees to keep the registration process active. Furthermore, the trademark owner is required to file a Declaration of Use or Excusable Nonuse along with stipulated fees, after six years of registration date, before the end of the sixth year, or after the end of six years within six months under Section 8 of the Act. Moreover, along with this declaration trademark owner is liable to submit e a verified statement stating that the trademark is in use in commerce, with evidence showing that use. If he fails to submit a declaration, the registration of his trademark will be canceled.