Searching and Clearance of the Trademark.
A company is obligated to avoid creating a likelihood of confusion with the products and trademarks of others. While a company cannot knowingly adopt a confusingly similar trademark to another’s trademark of which they are aware, there is no legal mandate that a company undertake a trademark clearance search before adopting a name or mark. Nonetheless, a trademark clearance search prior to adoption is a good idea. This is true regardless of whether a company intends to itself pursue a registration for its new mark. The trademark registration process takes nearly a year or even more. Even if a registration is not pursued, it may take months or even years for a competitor with a registration to learn of your company’s use of a mark and, therefore, a long time before a dispute arises. In either case, significant marketing efforts and expenditures can be undertaken during this delay, all of which are potentially wasted if a company must stop using a mark.
Obtaining a Federal Registration.
Once a company has formulated a bona fide intent to use a trademark in interstate commerce, an application can be filed for that mark. Although an application can be filed based upon the actual use of a trademark, such use is not necessary for the initial application filing. At some point prior to the issuance of the federal registration, commercial use of the trademark must be commenced. Proof of that actual trademark use must be provided to the Trademark Office in the form of a written affidavit or declaration swearing to this use and a specimen that shows how the trademark is actually used on the product or with the service. The procedures and requirements involved in filing a trademark application are discussed in further detail on the Trademark Office website: www.uspto.gov/main/trademarks.htm. Once the application is filed, it is assigned to an Examining Attorney at the Patent and Trademark Office who is thereafter responsible for that application. It is not uncommon for it to take six months or more to receive a first substantive action from the Examining Attorney on the application. This takes the form of a written communication, called an “Office Action,” that states any reasons for objection to the registration of your mark. It is common for the Examining Attorney to initially raise some form of objection to the application. If there is an objection or some further action needed to be taken by the applicant, the applicant is allowed six months to submit a written response to the Office Action. Although it is possible to conduct either a personal or a telephone interview with the Examining Attorney, responses are typically written, and a written response would normally be required even if some type of interview takes place. The written response may take any number of approaches, such as explaining why the mark is believed to be properly registrable despite the initial objection, providing information or corrections requested by the Examining Attorney, or otherwise responding to the points raised in the Office Action.
Ultimately, an allowed application is published prior to issuance of a registration. This allows other companies to pursue an objection, referred to as an “Opposition,” if the other company feels that this registration would damage the other company.