Trademark Prosecution

A trademark can be registered in the United States if it can be shown that the mark is unlikely to be confused by an ordinary consumer with another trademark. The trademark must also meet other requirements. For example, the mark cannot be functional (e.g. provides a significant commercial advantage due to a utilitarian feature). The mark also cannot be a generic name of a product or service (e.g., “soda pop” for soda pop beverages).

Moreover, if the mark is found to be descriptive of a product or service, it can be necessary to show that the mark has acquired distinctiveness , which is also referred to as having obtained a secondary meaning, in order for the mark to be registered as a federal trademark in the U.S. Distinctiveness is acquired when it can be shown that “ ‘in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.’ ” American Beverage Corp. v. Diageo North America, Inc., 2013 WL 1314598 *30 (W.D. Pa. 2013) (quoting Inwood Labs., 456 U.S. at 851 n.11). One test used to assess whether a mark has acquired secondary meaning is to determine whether the mark is interpreted by the consuming public to be not only an identification of the product or service, but also a representation of the origin of that product or service. See e.g. American Beverage Corp., 2013 WL 1314598 at * 30 (quoting Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000)).

To obtain a federal US trademark registration, an application must first be filed with the US Patent and Trademark Office (USPTO). The application can be filed for a mark a party intends to use in commerce or can be filed for a mark that has already been in use in commerce. Generally, the application includes an identification of the mark, a listing of goods or services used in connection with the mark, and a declaration stating that the information included in the application is accurate. The USPTO will also charge a fee for each class of goods or services listed in the application.

After the application is filed, it will be examined by the USPTO. This examination process may not start right away. Typically, it will take between three and twelve months after the application is filed for the USPTO to initiate examination of a filed application. A trademark examining attorney at the USPTO will be assigned to the application and examine that application.

During prosecution of the trademark application, a trademark examining attorney may refuse registration. An applicant can appeal that refusal to the Trademark Trial and Appeal Board (TTAB). If that appeal results in affirming the refusal to register, the ruling of the TTAB may be appealed to the US Court of Appeals for the Federal Circuit or to a US district court.

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