I decided to look at Office Actions that were issued for set of trademark applications for three trademark that were filed by well-known individuals or organizations last year. The first trademark is the word “the,” which was filed by The Ohio State University. The second trademark is the phrase “Tom Terrific,” which was filed by the professional football player Tom Brady. The third trademark is the phrase “Taco Tuesday,” which was filed by professional basketball player LeBron James.

While these trademarks might not be the typical type of trademark that is used by Industrial Heating readers, a discussion of each Office Action should provide some insight into the trademark application process. Accordingly, each trademark will be discussed in this series of blog posts.

The Trademark Registration Process

Before discussing each of the above-described trademarks, I would like to present an overview of the trademark application process.

The first step in the trademark application process is to gather all of the relevant information and to file a trademark application. The United States Patent and Trademark Office (USPTO) will examine the trademark application approximately 2-3 months after it is filed. The filing of an application does not guarantee that a trademark registration will be issued.

The USPTO employs trademark attorneys who examine each application to determine whether any conflicting marks have been registered and whether the mark meets various registration requirements. 

Each examining attorney will make an independent decision as to whether the trademark is entitled to be registered. In some cases, the first action taken by an examining attorney is to issue a rejection in an Office Action. It is then up to the applicant (or its attorney) to respond to the rejection by either pointing out why the examining attorney’s position on the rejection is incorrect or to amend the application.

The Office Action can contain both substantive rejections and rejections for informalities. The most common substantive rejections are rejections for a likelihood of confusion or for mere descriptiveness. The most common informalities are problems with the description of the mark or a need to disclaim one or more words that are used in the trademark.

The correspondence between an applicant and the examining attorney is known as prosecution of the trademark application and is basically a negotiating process. The desired end result is that the two sides will reach an agreement that will allow the mark to be registered. In the alternative, the examining attorney may take a position that the mark is not entitled to registration regardless of the arguments or the amendments that the applicant makes.

If the examining attorney determines that the mark is not entitled to registration and issues a “final rejection,” then the applicant has the option of appealing the decision to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

If the examining attorney determines that the mark is entitled to be registered, then the mark will be published for opposition. At that point, anyone who can identify a legal reason why the mark should not be registered will have the ability to initiate an “opposition proceeding” to prevent the registration of the mark-at-issue. Then the TTAB will have to decide whether to allow the mark to be registered.

USPTO statistics indicate that fewer than 5% of all trademark or service mark applications are subject to an opposition proceeding.

Once the opposition period closes, the mark will be registered. No further action will have to be taken for six years, when you will be required to submit an affidavit to prove that the mark is still being used in commerce. A registration is valid for 10 years and can be renewed every 10 years.