It is mandatory for a company/business to register itself with a distinct trademark. It is illegal to use a trademark that is similar to another business/company.
Federal and state trademark databases enough to uncover a possible conflict ?
Federal and state trademark databases help in making a wide search for similar trademarks in a country. Thus, a business before it’s trademark registration can make a search in its state trademark database and check for similar names. This can help in making a wide selection of a trademark name.
Thus, databases are enough to uncover a possible conflict.
As trademark search is an imprecise science, this is not ideal but sufficient. Since trademark rights are granted on a ”first come” basis, it’s important to determine if anyone is using your title in a trademark sense.
This is accomplished by doing a screening search. Many valid trademarks exist at common law without ever appearing on the federal trademark register.
Federal Trademark Database Search
Some appear in state trademark registrations others are not registered at all. Thus, the search must encompass marks beyond those shown in federal applications and registrations. Do you wish to know more about federal trademark database search ? Just visit USPTO website.
What kind of review will the USPTO conduct after I file my trademark application
Two main kinds of review can be expected from USPTO after filing an application for a trademark. The USPTO will first review your application to check whether you have completed the basic filing requirements or not. The application is then sent to an attorney in charge of examining it.
The attorney examines the application to make sure that all the necessary requirements including the payment of required fees are fulfilled by the applicant. There would be an intact examination which includes the search for conflicting trademarks (both registered and pending).
If the examining attorney, after the examination of the application decides to refuse the registration, he/she will send you a letter called an Office Action. This letter explains the reasons for the refusal mentioning the technical/procedural errors with your application. Very often, the applicant will be granted a chance to correct any inadequacy in the application, except in case of conflict with other trademarks. The examining attorney will contact you by email/phone if only minor corrections have to be made in the application. If a written Office Action is sent to you then you need to respond with the alterations within six months from the date of sending the mail. If not, it would lead to desertion of the application.
If your attempts fail to overcome the attorney’s objections to your application, he/she will issue a final refusal. To overcome the final refusal, an appeal can be made to the Trademark Trial and Appeal Board (TTAB) which is an administrative tribunal within the USPTO.
If your application passes through all the examination procedures, your mark will finally be published in the Official Gazette which renders a chance to the public to see whether your mark is damaging them in many means. If no objections are filed within 30 days of publication, the mark will normally be registered in 3-12 months which then will make you an official owner of a federally registered U.S trademark.
After the filing of the Trademark application, the examination will be conducted. The Trademark Registry submits the first examination report, this report can state any further requirement needed such as information’s/ documents in compliance of the Trademark Acts or in case the application appears failing the Trademark criteria. There are absolute grounds and relative grounds of refusal
1. The marks which are devoid of any distinctive character
2. Which consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity intended purpose, value geographical origin or the time of production of the goods or rendering of the services or other characteristics of goods or services.
3. Which consists exclusively of marks or indications which have become customary in the current language or in the bonafide practices of the Trade.
4. Which contains or comprises any matters which hurt the religious sentiments of the people.
5. Which are prohibited under the Emblems and Names prohibition Act 1950.
6. Which deceives or causes confusion to the public.
7. Which consists of marks which results in nature of goods themselves.
1. A mark is similar / identical to an earlier Trademark for the same or similar goods/ services.
2. A mark is similar/ identical to an earlier mark for different goods/services.
Examination of Trademark Application in India
However a mark which is initially refused by the registry can be registered if the mark has obtained a distinctive character. Ones the registry finds any such reason for refusal, it will send the objection letter to the client, and a reply to the objection must be submitted with the department within a month. The reply must be submitted with the evidence to support our mark.
Contact our trademark wing for knowing more about Examination of Trademark Application in India.