For Connecticut companies, filing a trademark application with the United States Patent and Trademark Office is the first step in protecting a company's valuable Connecticut trademarks and brand names.
In the United States, the trademark application is usually filed on one of two bases: (1) use in commerce or (2) intent-to use (ITU). For companies that have not yet used the trademark, an ITU application allows marketing and creative departments to file for a trademark registration during the product development process. This important feature of United States trademark law permits companies to obtain an important priority filing date and preserve whatever rights they may later obtain through use.
Regardless of the filing basis, every trademark application is first assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements. Upon review, the Examiner has the right to initially refuse the application on various legal and factual grounds. If the trademark examiner finds inadequacies in the application, she will issue an office action that details the reasons for the initial refusal of registration or request for additional, corrective information. Such grounds for refusal may include the following:
- a likelihood of confusion with a previously registered trademark
- the applied for mark is merely descriptive of the products;
- the applied for mark is primarily, merely a surname;
and/or several other factual and legal grounds as to why registration should not issue
If your trademark application has been initially refused registration, it is recommended that you hire an experienced Connecticut trademark attorney to prepare a response to the Office Action. Please call me for a free consultation at (203) 244-4264.