Verify the Right to Register
Verify the right to register the mark under the USPTO (or state) rules and guidelines. Verifying that you have the right to register before you apply may avoid or reduce refusals & office actions, and can avoid investing time and good will in a name or use of a name that cannot be federally registered on the Principal Register. See Comparison of Principal Register and Supplemental Register.
The Right to Register a trademark is determined by the Trademark Act of 1946 and the USPTO Trademark Rules of Practice. An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity or he/she is not represented by an attorney.
Grounds For USPTO Trademark Refusal-
(1) the applicant is not the owner of the mark (15 U.S.C. §1051; TMEP §1201);
(2) the subject matter for which registration is sought does not function as a mark (15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127) because, for example, the proposed mark:
(a) is used solely as a trade name (TMEP §1202.01);
(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging (15 U.S.C. §1052(e)(5); TMEP §§1202.02(a) et seq.);
(c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b) et seq.);
(d) is mere ornamentation (TMEP §§1202.03 et seq.);
(e) is the generic name for the goods or services (TMEP §§1209.01(c) et seq.); or
(f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08 and 1202.09 et seq.);
(3) the proposed mark comprises immoral or scandalous matter (15 USC 1052(a); TMEP §1203.01);
(4) the proposed mark is deceptive (15 USC 1052(a); TMEP §§1203.02 et seq.);
(5) the proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 USC 1052(a); TMEP §§1203.03 et seq.);
(6) the proposed mark comprises the flag, coat of arms or other insignia of the United States or any State, municipality, or foreign nation (15 USC 1052(b); TMEP §1204);
(7) the applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205 et seq.);
(8) the proposed mark comprises a name, portrait or signature identifying a particular living individual without the individual’s written consent, or the name, portrait or signature of a deceased president of the United States during his widow’s life, without written consent of the widow (15 USC 1052(c); TMEP §§1206 et seq.);
(9) the proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive (15 USC 1052(d); TMEP §§1207 et seq.);
(10) the proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(1); TMEP §§1209 et seq.);
(11) the proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 USC 1052(e)(2); TMEP §1210.01(a));
(12) the proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(3); TMEP §1210.01(b)); or
(13) the proposed mark is primarily merely a surname (15 USC 1052(e)(4); TMEP §§1211 et seq.).
“The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. [The USPTO does] NOT decide whether you have the right to use a mark (which differs from the right to register).” http://www.uspto.gov/web/offices/tac/doc/basic/jobofuspto.htm
When a USPTO trademark examiner determines the right to register a mark, abandoned trademarks are given no consideration but registrations and pending applications may be used as a basis to refuse a mark for a likelihood of confusion with a registered or pending mark. Regardless of the status of an application within the office, (even if there is no application or registation) an owner may still claim common law rights through an opposition or cancellation process. The trademark opposition process applies only to marks on the Principal Register.
Verifying the “Right to Register” is just one step in our Verification Process. See
VerifyATrademark.com for our Five-
To Verify a potential trademark is strong, available to use, and ready to register,
we do much more than a direct hit federal search. To maximize the commercial strength
and minimize the weaknesses of a trademark, Not Just Patents recommends our service
and our Five-
4) Verify the potential mark (as currently used) Functions As A Mark, and
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.
Business owners should be aware that the right to register is determined by both the application and the mark, not just the mark being registered. Many trademark refusals can be overcome by correctly answering the office action and/or submitting a better specimen of use. See Function as a Mark for more information on marks and showing proper use of the mark in a trademark application and Acceptable Specimen for more information.
Not Just Patents ® Legal Services are available at great prices to help you get your
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