what if the trademark examining attorney did not find my mark

You have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) when the trademark examining attorney issues a final refusal to federally register your mark.

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What happens when a trademark examiner refuses to register a trademark?

A Section 2(d) "likelihood of confusion" refusal is made when an examining attorney completes a search of the USPTO database of registered trademarks and determines that your trademark is similar to one or more registered trademarks used with goods or services that are related to your goods or services. Under these circumstances, a consumer is likely to be confused about …

What to do if you find an error in your trademark?

If you find an error after your mark is published in the Trademark Official Gazette (TMOG). Submit the form Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment . See the Trademark Manual of Examining Procedure (TMEP) §§1505-1505.03(b) for more information on changes after publication.

What does a trademark examinating attorney do?

Jan 09, 2015 · After your trademark application has been reviewed and approved by an examining attorney, the mark will be published for opposition, which means that the trademark opposition period starts. The trademark opposition period is a period of thirty days when anyone with a real interest in the proceeding can oppose the trademark application and ...

What happens after I file an appeal for a trademark?

The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds that it is deceptively misdescriptive or, in the alternative, merely descriptive, of Applicant’s identified goods. We affirm the refusal to register on the ground that

What makes a trademark invalid?

Generally, there are four reasons invalidation of a registered extension of protection to the United States may occur: (1) cancellation proceedings instituted by a third party before the Trademark Trial and Appeal Board; (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit ...

Do trademarks have to be exact?

When approved, a trademark restricts others from using an exact or similar mark. In order to qualify for legal protection, a trademark must be unique. Prior to filing an application, the designer or business owner should conduct a thorough search of the existing trademark registration database.

How is a trademark violation determined?

To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent.

How do you correct an error in a trademark application?

If you find an error after your mark is registered.Submit the form Section 7 Request for Amendment or Correction of Registration Certificate.See TMEP §1609 for more information on corrections after registration.Dec 10, 2018

What happens if a trademark is refused?

If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). ... The appeal must be filed in the prescribed manner following the TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules.Jul 6, 2021

How different must a trademark be?

WHAT IS A TRADEMARK? ... SELECTING STRONG MARKS In order to distinguish the goods of one party from those of another—and to function as a trademark—a word, phrase, design or symbol must be distinctive. A mark's distinctiveness determines, in part, the overall strength of a mark and the degree to which it can be protected.

What are the 8 elements used to determine infringement of a trademark?

In determining the likelihood of confusion in trademark infringement actions the courts look to these eight factors: the similarity of the conflicting designations; the relatedness or proximity of the two companies' products or services; strength of the plaintiff's mark; marketing channels used; the degree of care ...Dec 9, 2008

How many years does a trademark last?

In the United States, a federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed.Mar 21, 2019

What are the most common defenses to trademark infringement?

The most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment.

Can you update a trademark description?

Simply put, it means changing or altering the application in some manner after it's filed. The way to amend a trademark application is by filing an amendment with the United States Patent and Trademark Office (USPTO).

Can trademark application be amended?

Amendments to a trademark application or a trademark registration in India can be made by filing a request with the trademark office. ... Form TM-M is used when the trademark application is pending registration. Form TM-P is used when the trademark application is registered.

Can I edit my trademark application?

U.S. Trademark Law permits amendments to existing trademark registrations, provided that the changes are not a “material alteration” and do not alter the “commercial impression” of the trademark.

What does an examining attorney do?

An examining attorney typically includes and discusses evidence that supports a refusal and/or requirement in an office action. For example, an examining attorney may attach evidence of third-party registrations to show that certain goods are related because they are provided by the same business owner.

What is an examiner's amendment?

Examiner’s amendments are used to move your application toward registration faster. Priority action. A priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application.

What is the USPTO?

The United States Patent and Trademark Office (USPTO) may issue several different types of office actions about your trademark application. This page focuses on office actions that trademark examining attorneys send during the application process.

How long does it take to respond to an office action?

Generally, we must receive your response to an office action within six months from the date it issued for the response to be considered “timely.”. Some types of office actions have a shorter deadline. Read your office action carefully to determine the specific deadline for the response.

What is an office action?

An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before we can register your trademark. In an office action, an examining attorney may require ...

What to do if amendment is not accepted?

In some cases, if your amendment is not accepted, you may have the option to file a Petition to Director to review the decision. See TMEP §1700 for further information.

What happens after you submit an amendment?

After you submit your amendment, we will determine whether your error is correctable. See the Trademark Manual of Examining Procedure (TMEP) for explanations and examples of acceptable corrections. For example:

What is an unauthorized change?

Unauthorized changes have been made to a number of active trademark applications and registrations. These changes may be part of a scheme to register the marks of others on third-party “brand registries.”.

How long does it take to respond to a trademark opposition?

Once a notice of opposition has been filed against your trademark application, you must file an answer within 30 days. This answer must respond to each of the allegations made in the notice of opposition. Once your answer is filed, the Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding.

How many trademarks does Gerben Law Firm have?

Gerben Law Firm has registered over 4,500 trademarks since opening our doors in 2008. We work with clients from all 50 states, and, from 30+ countries around the world. Contact us today for a free consultation with a trademark attorney.

What happens if you receive a default judgment?

If you received a “notice of default,” this means that you did not respond to a notice of opposition or did not provide information required within the trial calendar. Generally, the TTAB will issue a favorable ruling for the opposing side. In some cases, you may be able to file a motion to lift the default judgment and continue on with the trial. If a default judgment is issued against you, the judgment is binding against any future applications you try to file for the same mark. You cannot simply start over and argue different arguments before the USPTO.

What does it mean when you receive a notice of default?

If you received a “notice of default,” this means that you did not respond to a notice of opposition or did not provide information required within the trial calendar. Generally, the TTAB will issue a favorable ruling for the opposing side.

Who is Josh Gerben?

Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.