United States Patent and Trademark Office Practice on Trademark Examination

12/01/2020

On November 24, 2020, the World Intellectual Property Organization (WIPO) in collaboration with the United States Patent and Trademark Office (USPTO, https://www.uspto.gov/trademark) proposed to users of the Madrid System the webinar Understanding Examination and Refusal Procedures in the IP Office of the United States of America, by which the interested public was given the opportunity to become acquainted with some particular/specific aspects in the field of trademark examination, such as:

  • the procedure for receiving, examining and registering trademarks;
  • post-registration procedures, especially the periods between years 5-6, 9-10 of the 10-year validity period of the trademark, when the owner must present documents that would demonstrate the maintenance of the trademark (its use), the non-presentation of which will lead to trademark invalidation by the USPTO;
  • Timeline AXIS (https://www.uspto.gov/trademark/trademark-timelines/section-66a-timeline-application-based-madrid-protocol);
  • Types of trademarks accepted by the USPTO;
  • Classification and identification of goods/services (Trademark ID Manual, https://idm-tmng.uspto.gov/id-master-list-public.html) - speakers emphasized that the main source of refusals issued by the USPTO is incorrect classification/identification of goods/services claimed in the applications, the USPTO does not accept the abstract/title of the classes, as presented in the Nice classification;
  • Detailed description of the trademark required for registration;
  • Absolute and relative reasons for refusal;
  • Provisional refusal - the applicant has 6 months to respond to the notice of provisional refusal from the date of its dispatch to the International Bureau of WIPO. Beginning with 2019, applicants who are not domiciled in the United States must be represented before the USPTO by a local attorney.

USPTO communicates with applicants ONLINE only using the Trademark Electronic Application System (TEAS) (https://www.uspto.gov/trademarks-application-process/filing-online/initial-application-forms).

All trademark examination procedures are described in detail in the Trademark Manual of Examining Procedure (https://tmep.uspto.gov/RDMS/TMEP/current).

During the webinar, the speakers mentioned that, from February 18, 2021, the US fees for registration, territorial extension and renewal of an international registration will be changed (https://www.wipo.int/edocs/madrdocs/en/ 2020 / madrid_2020_73.pdf).

For more details you can access the link: https://www.wipo.int/meetings/en/details.jsp?meeting_id=59155.