Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.
Results: 4 Answers
Trademarks
3.
Registration procedure
3.1
Which governing body (ie, trademark office) controls the registration process?
 
United States
In the federal (nationwide) system, the US Patent and Trademark Office (USPTO) controls the registration process. Individual states and US territories have their own trademark offices. The answers in this section discuss only the USPTO’s federal registration process. Details on federal trademark examination can be found in the USPTO’s Trademark Manual of Examining Procedure (TMEP), which can be found at http://tmep.uspto.gov. The TMEP consists of policies and procedures derived from the trademark rules promulgated by the US Department of Commerce in Title 37 of the Code of Federal Regulations.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.2
What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
 
United States
The USPTO provides a comprehensive schedule of its fees on its website at www.uspto.gov/trademark/trademark-fee-information.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.3
Does the trademark office use the Nice Classification scheme?
 
United States
Yes.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.4
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
 
United States
The USPTO does not allow class-wide applications. The applicant must identify the specific goods or services for which the mark will be used. Also, in general, the USPTO will not issue a registration unless the applicant submits an affidavit to the effect that it is using the mark for all of the goods and services identified in the application in the ordinary course of trade in bona fide sales in US commerce (ie, interstate or US-foreign commerce).

For more information about this answer please contact: John Crittenden from Cooley LLP
3.5
Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
 
United States
Yes.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.6
Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
 
United States
Yes.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.7
What types of examinations does the trademark office perform other than relative examination?
 
United States
In addition to conducting a search for conflicting marks, the USPTO examining attorney will examine the written application, any voluntary amendments or other documents that the applicant files before an initial office action is issued, the drawing (ie, depiction of the mark), any specimen(s) of use of the mark and any foreign registration(s) to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary and whether all required fees have been paid (Trademark Manual of Examining Procedure (TMEP) §704.01).

The examining attorney will perform a substantive examination that considers:

  • the ownership of the mark;
  • whether the proposed mark functions or will function as a trademark;
  • whether the proposed mark is sufficiently distinctive to serve as a trademark (ie, whether it is generic or descriptive, and if it is descriptive, whether it has acquired secondary meaning);
  • whether the mark includes descriptive matter that must be disclaimed;
  • the effect of the applicant’s prior registrations; and
  • whether registration is barred by a prior adjudication against the applicant.

More details on the USPTO’s substantive examination can be found at TMEP §§1200 et seq.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.8
Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
 
United States
Yes, Section 2 of the Lanham Act (15 USC §1052) provides that the USPTO shall refuse to register a proposed mark if:

  • it consists of or comprises the flag, coat of arms or other insignia of the United States, a state or municipality, or a foreign nation (TMEP §1204);
  • it is the name, portrait or signature of a particular living individual or deceased US president, without the consent of that individual (TMEP §1206);
  • it is geographically descriptive or geographically deceptively misdescriptive (TMEP §1210); or
  • it is a surname (TMEP §1211).

In addition, the USPTO will deny registration for:

  • certain designations of US government agencies;
  • designations for which Congress has granted exclusive rights to certain private corporations and organisations (eg, the Boy Scouts and Girl Scouts); and
  • other words or symbols protected by statute (eg, the copyright symbol © , the Red Cross and Red Crescent emblems, and designations associated with the Olympic Games) (TMEP §1205).

Details on these other grounds under which a mark is ineligible for registration can be found in TMEP §§1203-11.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.9
Is there a separate or supplemental register on which descriptive marks may be registered?
 
United States
Yes.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.10
Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
 
United States
Yes, by letter of protest (TMEP §1715).

For more information about this answer please contact: John Crittenden from Cooley LLP
3.11
Must the applicant use the trademark commercially in order to obtain a registration?
 
United States
Yes – in US commerce (ie, interstate or US-foreign commerce).

For more information about this answer please contact: John Crittenden from Cooley LLP
3.12
How much time does it typically take from filing an application to the first office action?
 
United States
About three months.

For more information about this answer please contact: John Crittenden from Cooley LLP
3.13
How much time does it typically take from filing an application to publication?
 
United States
If there are no office actions, around six months (although this may vary depending on the USPTO’s workload).

For more information about this answer please contact: John Crittenden from Cooley LLP
Contributors