IPR

1. Intellectual Property Rights
Presented by
Dr. B.Rajalingam
Assistant Professor
Department of Computer Science & Engineering
Priyadarshini College of Engineering & Technology, Nellore
Revision (Unit 2)
Trade Mark Registration Processes

2. Syllabus
• Purpose and Function of Trade Marks
• Acquisition of Trade Mark Rights
• Protectable Matter
• Selecting and Evaluating Trade Mark
• Trade Mark Registration Processes
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3. Trade Mark Registration Processes
• There are two primary paths to registration for U.S.- based applications: a use -
based application (alleging use in interstate commerce) and an intent-to-use
application (alleging a bona fide intent to so use the mark in the future).
• Both types of applications share many common features and progress through the
registration process in a fairly similar fashion.
• The process for federal registration of a mark can be expensive and can take as
long as 10 to 18 months, even if there are no significant problems or delays.
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4. Filing the Application
• The application must be filed with the USPTO within a reasonable time after it has
been signed by the applicant, generally within one year after signature.
• The application must be accompanied by a filing fee for each class of goods and/or
services.
• The amount of the trademark application fee varies depending on whether the
application is filed on paper or electronically.
• To encourage electronic filing, the USPTO reduces fees for applications filed
electronically through TEAS from $375 to $325.
• A newer system called TEAS Plus reduces application fees even further, to $275.
• To qualify for TEAS Plus, an applicant must use a description of goods and
services from the USPTO Manual, agree to file other documents electronically, and
agree to receive communications from the USPTO by e-mail.
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5. Cont…
• Applications for certification and collective marks are not eligible for TEAS Plus
filing.
• To simplify the payment process, many applicants establish deposit accounts with
the USPTO and deposit a certain amount of money (at least $1,000) into an
account against which fees can be drawn.
• Alternatively, the USPTO accepts payment of fees by credit card, electronic funds
transfer, and check.
• An advantage of filing electronically through TEAS is that the USPTO
immediately issues a confirmation of filing via e-mail as well as a separate e-mail
acknowledgement of receipt that includes the serial number, filing date, and a
summary of the application details.
• The filing date of the application is critical because it initiates various time limits.
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6. Cont…
• For example, applicants have a duty to inquire about the status of an application
if they do not hear from the USPTO within six months of any filing.
• Thus, the filing date should be calendared or docketed so that you can ensure the
USPTO has provided you with some correspondence or action within six months
of the filing date.
• Finally, if an applicant wishes to file an application for the mark in a foreign
country that is a member of the Paris Convention, it has six months from the
filing date within which to do so and thereby claim the date of the filing in the
United States.
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7. Initial Role of the U.S. Patent and Trademark Office:
The File Wrapper and the Official Filing Receipt
• When the USPTO receives a TEAS application, it creates an electronic file, usually referred
to as the file wrapper, which is the official USPTO file, and it contains the application,
drawing, specimens, and all communications with the USPTO.
• Documents in these electronic file wrappers can be viewed and downloaded using the
USPTO’s system called Trademark Document Retrieval (TDR).
• Nearly all applications are available through TDR, and the USPTO is in the process of
converting older paper files into digitized formats so they may be accessed via TDR.
• The USPTO no longer creates and maintains paper file copies of trademark applications
and now relies exclusively on data submitted or captured electronically.
• Applications submitted electronically through TEAS are accessible nearly immediately
through the USPTO’s website.
• Immediately after an electronic application is filed, the USPTO will issue an e-mail
confirmation of filing. Trade Marks: Dr. B.Rajalingam20 May 2020 7

8. Cont…
• The filing receipt will confirm the filing date of the application, provide a serial
number, and confirm all details of the application, including dates of first use,
basis for filing, applicant’s name and address, the goods or services offered under
the mark, and the international class.
• Because the filing receipt reflects what the USPTO believes to be the pertinent
details of the application, it should be carefully scrutinized for correctness.
• If there are any errors, even minor spelling mistakes, the applicant should
immediately inform the USPTO.
• Failure to notify the USPTO of some discrepancy may result in the certificate of
registration including the erroneous information.
• Once the filing receipt or e-mail confirmation is received, the docketing system
should be updated to ensure that additional action is taken on the application
within six months thereafter.
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9. Examination Procedure
• After the USPTO issues its e-mail confirmation, the application is assigned for
review to an examining attorney.
• Many examining attorneys move into private practice after a few years with the
USPTO.
• Examining attorneys are assigned to “law offices” within the USPTO, each of
which has responsibility for certain types of applications.
• It is the function of an examining attorney to review the application, search the
USPTO files to determine if the mark applied for is confusingly similar to
another, make a determination on whether the mark is registrable, and ultimately
either refuse registration of the mark or approve it for publication.
• Examination is the least predictable stage of the prosecution process.
• Applications by the same party for identical or similar marks, called companion
applications, are usually handled by the same examining attorney.
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10. Office Actions and Refusals to Register Marks
• Approximately three months after the application is filed, the examining attorney assigned
to the application will issue a “first action” or office action regarding the application if there
are any defects in the application.
• If there are no defects in a use-based application, the USPTO will approve the application
for publication in the Official Gazette.
• The office action is a written communication sent by the examining attorney to the
applicant that states that the mark has been refused registration and explains why
registration has been refused.
• All office actions must be responded to within six months to avoid abandonment of the
application.
• Most office actions are sent by e-mail.
• To monitor pending applications, either use TARR (by entering a serial number) or TESS,
through the USPTO website.
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11. Post examination procedure
• Assuming the applicant responds satisfactorily to the office action, the examining
attorney will approve the mark for publication in the weekly Official Gazette.
• The mark as applied for will be reproduced as the applicant set it forth in the
drawing page together with an identification of the owner, a description of the
mark, the goods or services offered under the mark, and the filing date and serial
number of the application.
• The purpose of publication is to afford interested parties the opportunity to review
the mark and oppose its registration, usually on the basis that the mark is
confusingly similar to another mark.
• Marks on the Supplemental Register are not published for opposition, but are
issued as registered marks on the date that they are printed in the Official Gazette.
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12. Cont…
• A notice of opposition must be filed with the TTAB within 30 days of publication
of the mark in the Official Gazette.
• Extensions of time to oppose may be granted as follows:
• A first request for a 30-day extension will be granted without a showing of good
cause.
• Alternatively, a first request for a 90-day extension will be granted upon a
showing of good cause.
• If the first request was for 30 days, a second request for a 60-day extension will
be granted upon a showing of good cause.
• After receiving extensions totaling 90 days, a final request for a 60-day extension
will be granted if the trademark applicant consents.
• The time for filing an opposition may not be extended beyond 180 days from the
date of publication in the Official Gazette.
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13. Flow Chart for Trademark Registration
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14. Thank You
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