Deck 4: The Trademark Registration Process

Question 1

If there is doubt whether there is a likelihood of confusion between a mark in an application and a prior mark, doubt is resolved against the newcomer.

Answer 1

True

Question 2

Identify the two registers on which marks are registered at the USPTO.

Answer 2

​ Marks are registered on the Principal or Supplemental Registers.

Question 3

Trademark applicants must provide ______ specimen(s) showing how the mark is seen by the public.

Answer 3

one

Question 4

An intent-to-use applicant must file a specimen when the Statement of Use is filed.

Question 5

If color is not claimed as a feature of the mark in a trademark application, the mark may be displayed in any color.

Question 6

The process of moving a trademark application through the USPTO, from filing until registration, is called ______ .

Question 7

Any trademark applicant may use the registration symbol once an application for the mark is filed.

Question 8

Any member of the public may view any documents filed in connection with anyone's trademark application.

Question 9

The maximum period of time to file an opposition to a mark in a trademark application is 180 days from the date of publication in the Official Gazette .

Question 10

An intent-to-use application cannot proceed to registration until actual use of the mark in commerce has been shown.

Question 11

Fees for filing a trademark application using paper are more expensive than using the USPTO's electronic system to file an application.

Question 12

Identify two distinctions between registration on the two registers of the USPTO.

Question 13

If a mark has been in continuous use for three years, such shows that the mark has acquired distinctiveness.

Question 14

If a trademark application is abandoned due to an applicant's failure to respond to an office action, the application may usually be revived  if the delay in responding to the office action was unintentional.

Question 15

Any mark that cannot be registered on the Principal Register can be registered on the Supplemental Register.

Question 16

Trademark applicants have a duty to inquire about the status of their trademark applications.

Question 17

A trademark application that identifies "all goods in I.C. 16" would be acceptable.

Question 18

Will the USPTO accept the following identification of goods: "Women's clothing, including slacks"? Discuss.

Question 19

Examination of a trademark application is a highly predictable stage of of the trademark application process.

Question 20

Advertising materials and brochures are not acceptable specimens to show use of a mark for wallets.

Question 21

The name of the treaty that provides a right of priority for trademark applications is ______.

Question 22

Assume that Paul files an intent-to-use application with the USPTO on February 1, 2016. Paul uses the mark on August 1, 2016, and obtains a registration for the mark on November 1, 2016. For purposes of determining priority of use in a later dispute with another person or entity, what date is used for Paul's mark? Discuss.

Question 23

How would one go about monitoring the progress of a trademark application at the USPTO?

Question 24

Once a mark is registered at the USPTO, its owner is called ______.

Question 25

To simplify making payments to the USPTO, many applicants establish a ______ with the USPTO, against which funds due to the USPTO may be drawn.

Question 26

The individuals at the USPTO who examine trademark applications and determine if marks should be registered are ______.

Question 27

A Notice of Opposition or a Request for Extension of Time to Oppose a Mark must be filed with the Trademark Trial and Appeal Board within ______ of publication of the mark in the Official Gazette .

Question 28

If an applicant disclaims the word "cleaner" in a trademark application for WONDER WINDOW CLEANER, what does this mean?

Question 29

Members of the public who wish to comment on a pending application or bring to the USPTO's attention any matter that reflects on the registrability of a mark may file a ______ with the USPTO.

Question 30

Assume the USPTO has refused registration of a mark on the basis that it is descriptive. In what ways might the applicant demonstrate that the mark has acquired descriptiveness? Discuss.

Question 31

Why are fees for trademark applications that are filed electronically lower than those for paper applications?

Question 32

Why does the USPTO generally accept a consent agreement between the owners of two marks by which they agree that their marks can coexist?

Question 33

Rachel files a trademark application in the United States on November 15, 2016. What is the advantage to Rachel of filing her trademark application in Germany by May 15, 2017?

Question 34

Assume that notices of allowance are issued for both a use-based application and an intent-to-use application on June 1, 2016. Describe the next steps that occur for each type of application.

Question 35

Applicants usually have ______ to respond to substantive defects in or objections made to a trademark application by the USPTO.

Question 36

If a Notice of Allowance for an intent-to-use application is issued on June 10, 2016, what is the maximum length of time that the applicant has to commence use of the mark (give the date).

Question 37

What is the purpose of publication of a trademark in the Official Gazette ?

Question 38

If the USPTO objects to a trademark application orfinds defects in the application, it will issue a[n] ______ to the applicant, explaining such objections.