Will the USPTO cancel an application where someone is using my mark? The USPTO trademark examiner compares new applications to already pending and already registered marks. If a new application has a likelihood of confusion with a prior pending or registered mark the application will probably be refused registration. What about if my trademark is not registered? The USPTO does not enforce unregistered marks in the application process but the owner of an unregistered mark who has superior rights may be able to stop a trademark application through the opposition process or a trademark registration through the cancellation process.
What does Registration Certificate mean? This means the trademark has registered with the USPTO and a certificate will be mailed to the correspondent on record.
What does ‘Notice of Acceptance of Statement of Use’ mean? This means the Statement of Use has been approved for an Intent to Use application that has already been through its Opposition Period with no opposition and the trademark should register in 4-6 weeks.
What does ‘Publication & Issue Review Complete’ mean? This means the final review prior to publication has been completed, application will be published in the Official Gazette when it is registered (for an Intent to Use application that has already gone through its opposition) or will be published for opposition (for a Use in Commerce application that has not gone through its Opposition Period yet.
What does ‘TRAM Snapshot of App at Pub for Oppostn’ mean? This means the final review prior to publication has been completed and the application will be published for opposition. This document appears twice in an Intent to Use application even though the second time it is not going to publish for opposition again, it is just going to publish in the Official Gazette.
What does ‘ITU Unit Action’ mean? This means that the USPTO Intent to Use (ITU) department is in the process of taking action on an Intent to Use Application. Actions include approving or disapproving a Statement of Use (SOU) or Alleged Amendment of Use (AAU) or approving or disapproving a request for an extension of time to submit a specimen of use.
What does ‘Statement of Use’ mean? What does ‘Specimen’ mean? What is an ‘Allegation of Use’?
A Statement of Use is one form of An Allegation of Use, a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. (Since most trademarks are now filed electronically, this is usually an electronic signature.) With the Allegation of Use, the owner must submit: a filing fee of $100 per class of goods/services; and one specimen. A specimen is a sample of the use of the mark that acts as evidence that the mark has been properly used in commerce for each class of goods/services. The actual form for filing the allegation of use is available at http://www.uspto.gov/teas/index.html. Note that the type of sample appropriate for submission is different for a trademark (sales of goods) than it is for a service mark (sales of services). An Amendment to Allege Use (AAU) is another type of Allegation of Use but differs in the time period when it is submitted. See Additional Requirements For Intent to Use Application for more information.
What is a ‘Notice of Allowance’ (NOA)? A written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Notices of allowance are only issued for applications that have been filed based on "Intent to Use". The Notice of Allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a Statement of Use (SOU). After receiving the Notice of Allowance, the applicant must file a Statement of Use or a request for an extension of time to file a Statement of Use within 6 months from the issue date of the Notice. If the applicant fails to timely file a Statement of Use or a request for an extension of time to file a Statement of Use, the application will go abandoned.
What does ‘Amendment and Mail Process Complete’ mean? This means that changes have been made to the trademark record. These changes may have been made by the applicant in a Response to Office Action (ROA) or Voluntary Amendment or may have been made by the examiner in an Examiner’s Amendment or may have been made by the applicant using some other form.
What does ‘Offc Action Outgoing’ mean? This document is usually a refusal to register based on a problem with the application or a problem with the trademark itself. The most common refusals are a LIKELIHOOD OF CONFUSION (conflicting mark) with a registered or pending trademark. Other common refusals are for MERELY DESCRIPTIVE trademarks or for goods and services identification problems. Occasionally, this is not a refusal but an examiner’s amendment documenting changes that the examiner has made usually as a result of an agreement with the attorney of record or applicant after a telephone conference.
What does ‘XSearch Search Summary’ mean? This is a listing of the LIKELIHOOD OF CONFUSION trademark search that the examiner did. The procedure like that trademark examiner’s follow is found at Likelihood of Confusion Search. Applicant’s can avoid LIKELIHOOD OF CONFUSION refusals by conducting similar trademark searches themselves and rejecting trademarks that are confusingly similar to registrations and pending trademarks. The problem with this is that CONFUSINGLY SIMILAR is a ‘term of art’ and is defined by both statutes and case law and is not just a matter of eliminating identical potential marks from consideration.
What does Publication & Issue Review Complete mean? This change in the record means that the USPTO believes the trademark would be entitled to registration under the current circumstances (assuming an acceptable AAU or SOU were filed for an intent-to-use application and that no new issues were found). If the application is an intent-to-use application, the examiner may re-examine an application when the Statement of Use (SOU) is filed because there may be new issues involved with the specimen submitted, new issues of likelihood of confusion with marks that registered during the lag time or other issues.
What does ‘Response to Office Action’ mean? This means a response has been filed by the applicant or applicant’s representative to an Offc Action Outgoing. A response must fully respond to the examiner’s office action in order to be accepted or the application may be issued a final refusal.
What does ‘TEAS Revoke Appointed Attorney’ mean? This means that an attorney has been changed (not necessarily revoked). The same form is used to appoint or revoke but the record always indicates Revoke in either situation.
What does ‘Notice of Pseudo Mark’ mean? The USPTO assign pseudo marks to some new applications to assist in searching the USPTO database for conflicting marks. Pseudo marks have no legal significance and will not appear on the registration certificate. The pseudo-mark entries in the USPTO databases allow likelihood of confusion searches for a particular word or term to automatically retrieve phonetic equivalents or pictorial equivalents that have been appropriately pseudo-marked. A pseudo mark may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. Pseudo-marks provide an additional search tool for locating marks that contain an intentionally-altered spelling of a normal English word or that contain the literal equivalent to a pictorial representation of the word in a design mark.
What does ‘Design Search Code Corr Project’ mean? The USPTO may assign design search codes, as appropriate, to new applications and renewed registrations to assist in searching the USPTO database for conflicting marks. They have no legal significance and will not appear on the registration certificate. DESIGN SEARCH CODES are numerical codes assigned to figurative, non-textual elements found in marks. For example, if your mark contains the design of a flower, design search code 05.05 would be assigned to your application. Design search codes are described on Internet Web page http://www.uspto.gov/tmdb/dscm/index.html.
What does ‘Notice of Abandonment’ mean? This means that the identified trademark was abandoned in full usually because a response to the Office Action was not received within the 6-month response period or a Statement of Use (SOU) was not filed within the 6-month response period after a Notice of Allowance. If the delay in filing a response or SOU was unintentional, you may file a petition to revive the application with a fee. If the abandonment of this application was due to USPTO error, you may file a request for reinstatement. Please note that a petition to revive or request for reinstatement must be received within two months from the mailing date of the notice of abandonment.
What does ‘Suspension Letter’ mean? A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.
What does ‘ITU Extension Approval’ mean? This means that another 6 months has been approved in which to file a Statement of Use in an Intent to Use application. Applicant must continue to file extension requests every 6 months calculated from the date the Notice of Allowance was issued until a Statement of Use is filed. Please note that a Statement of Use cannot be filed more than 36 months from the issuance date of the Notice of Allowance.
What does ‘Request to Divide’ mean? An applicant can split an application into separate parts containing different International Classifications in the event that one classification has been held up by refusals or lack of a Statement of Use for all classifications or other reasons. This allows the individual parts to be prosecuted separately. When the applicant files a request to divide goods/services that are in use from goods/services that are not yet in use, the USPTO puts the goods/services in use in the newly created (child) application, and retains the goods/services not in use in the original (parent) application. More child applications may later be created from the parent application.
What does ‘Notice of Publication’ or ‘Notice of Actual Publication’ mean? This is a written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette. If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication. The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.
What does "Notification of Notice of Publication" mean? This is a new addition to TSDR. This email notification indicates the future date of publication (the date of the beginning of the opposition period), and allow a user to go to TSDR to download the notice. Then, on the actual date of publication, "Notice of Actual Publication" will appear in the TSDR and will be emailed to the correspondent of record.
What does ‘Examiner's Amendment’ mean? This is a written confirmation of an amendment made to a trademark application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.
About 30% of TEAS PLUS applications go straight to publication without an office action so don’t be surprised if you are one of the 70% who receive a refusal of some type. Call us at Not Just Patents® Legal Services. We can help. See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.
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