The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that does not satisfy all of the legal requirements. Here is a list of documents that could trigger an office action if filed incorrectly:
The Section 71 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a registered extension of protection in the United States under the Madrid Protocol. The Section 71 only applies to trademarks that are registered with the USPTO through the Madrid Protocol. If your trademark is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration), then you are required to file the Section 8 Declaration of Use rather than the Section 71 Declaration of Use.
The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration. The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.
If you’re seeking legal assistance with a trademark matter, one of the first things you might do is type “trademark attorney near me” into Google or another search engine and see whose website pops up. And there’s absolutely nothing wrong with that. Such a search would probably reveal at least a couple of nearby attorneys who you could further research and look into. Maybe you’ll find a local trademark attorney who seems friendly, competent, reliable, trustworthy, and affordable. But maybe you won’t. And that’s perfectly OK. You know why? Because you can work with any trademark attorney you want regardless of whether the attorney is located down the street or across the country. This is especially true if you’re seeking trademark search or trademark registration services, or if you require assistance with a trademark office action, trademark opposition, or trademark cancellation.
A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register. The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.
The concept of “acquired distinctiveness” (also referred to as “secondary meaning”) is extremely important when it comes to registering a non-distinctive trademark with the United States Patent and Trademark Office (USPTO). The following are common examples of non-distinctive trademarks:
- Merely descriptive trademarks
- Trademarks that are primarily merely surnames
- Deceptively misdescriptive trademarks
- Primarily geographically descriptive trademarks
Non-distinctive trademarks are normally only eligible for registration on the Supplemental Register (as opposed to the Principal Register). But, there are circumstances under which non-distinctive marks can be registered on the Principal Register. Those circumstances have to do with the concept of acquired distinctiveness under what is known as Section 2(f) of the Trademark Act.
A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public. A “surname” is also often referred to as a “last name” or “family name.” Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.” However, there are millions of other surnames among the US population, many of which are shared by only a handful of people. As such, it’s not always clear when a trademark would be considered primarily merely a surname.
After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive an office action requesting that you provide a disclaimer of a particular element of your trademark. Usually, the requested disclaimer is for words or phrases that comprise a portion of your trademark, but the request could also be to disclaim a design or portion of a design. The good news is that dealing with a such a request is generally quite straightforward and non-controversial.
A primarily geographically descriptive trademark (not to be confused with a geographically deceptively misdescriptive trademark) is only entitled to registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has become distinctive of the products or services listed in the trademark application. If it has become distinctive, then it would be eligible for registration on the Principal Register. I invite you to review my blog post titled “Supplemental Register vs. Principal Register – What is the Difference?” so that you understand the many important differences between the two registers and the rights afforded by each one.
A deceptively misdescriptive trademark (as opposed to a deceptive trademark) is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Principal Register if it has acquired distinctiveness or “secondary meaning” in the minds of consumers. Otherwise, a deceptively misdescriptive trademark is only entitled to registration on the Supplemental Register. I encourage you to read my article titled “Supplemental Register vs. Principal Register – What is the Difference?” to learn more about the important distinctions between the two registers maintained by the USPTO.