USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
For intent to use applications, the applicant does not need to show use at the time of filing but must do so before the mark matures to registration. An applicant can have up to three years to prove use if extension requests are filed and fees paid. All marks are subject to proof of use between the fifth and sixth year after registration and at renewal. Failure to use a mark may also result in abandonment. 4.6 Consideration of Prior Rights in Registration The PTO reviews the register for conflicting prior marks when reviewing an application. If the examiner locates a mark on the register that he/she believes is confusingly similar, the examiner will either issue a refusal (in the case of a prior registration) or suspend the application (in the case of a pending application). Only active prior applications and registrations can be raised during examination; common law marks cannot be raised as a bar to registration. 4.7 Revocation, Change, Amendment or Correction of an Application An applicant can withdraw an application. Whether an application can be changed, amended or corrected depends on the error. Some common errors and the ability to correct are outlined below: • Information about the owner, such as the state of incorporation or address, is correctable, but an incorrect owner is not. • A mark may be amended if the amendment results in a “non-material” change that does not change the overall impression of the mark. • Descriptions of the goods and services can be amended, but not if the amendment broadens the description. • First use dates are generally correctible to an ear - lier date. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark registration if the owner assigns one of the classes of goods or services to another. This also requires filing the assignment, filing a request and paying a fee.
An application may be divided by paying a fee and filing a request where the application is filed based on an intent to use and the applicant can prove use for some goods but not for others. Division is also pos - sible by filing a request to overcome a refusal where the examiner has refused the application as to some goods but is willing to allow the application as to oth - ers. 4.9 Incorrect Information in an Application Minor inadvertent or good faith mistakes may be correctable, as outlined in 4.7 Revocation, Change, Amendment or Correction of an Application . 4.10 Refusal of Registration Trade mark applications can be refused for a number of reasons. If refused, the PTO will issue an Office Action. The applicant will have three months to respond and submit arguments against the refusal; however, the applicant can pay a fee and extend this deadline by three months. Common refusals include the following. Likelihood of Confusion With Prior Registered/ Applied-for Marks The PTO can refuse an application if it finds the mark is confusingly similar to a mark covered by a prior registration or application. – Applicants generally argue against confusion or sub - mit a letter of consent from the owner of the blocking mark. Descriptiveness The PTO can refuse an application because the mark describes a feature, function, characteristic, quality, etc of the goods or services. – Applicants often argue the mark is suggestive (see 2.2 Essential Elements of Trade Mark Protection ) or has acquired distinctiveness through longtime use or submission of supporting evidence such as a survey, advertising expenditures, etc. – The applicant can also amend the application to the Supplemental Register, provided the mark is in use. See 4.2 Trade Mark Register .
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