CTA Trademark Agent cheat sheet

Lanham Act (15 U.S.C. §§ 1051–1141n) is the primary U.S. federal trademark statute; it governs registration, opposition, cancellation, and remedies.

The Trademark Act of 1946 (Lanham Act) was amended by the Trademark Law Revision Act of 1988 (effective Nov. 16, 1989), which introduced intent-to-use applications.

The Madrid Protocol Implementation Act (2003) allows U.S. applicants to seek international registration via the Madrid System; the USPTO is the office of origin.

The Trademark Modernization Act of 2020 (TMA) created ex parte expungement and reexamination proceedings and clarified the rebuttable presumption of irreparable harm for injunctions.

The federal circuit courts have appellate jurisdiction over district court trademark cases; the U.S. Court of Appeals for the Federal Circuit hears appeals from TTAB and patent/trademark prosecution decisions.

The Supreme Court’s decision in Matal v. Tam (2017) struck down the Lanham Act’s disparagement clause as violating the First Amendment; Iancu v. Brunetti (2019) struck down the immoral/scandalous clause.

The definition of a trademark under 15 U.S.C. § 1127 includes any word, name, symbol, or device, or any combination thereof, used to identify and distinguish goods.

The two primary bases for U.S. trademark rights are (1) use in commerce and (2) bona fide intent to use, with registration providing constructive use nationwide as of the filing date (§ 1057(c)).

The concept of “use in commerce” under the Lanham Act requires bona fide use in the ordinary course of trade, not merely token use made to reserve a mark (see § 1127).

A clearance search should cover the USPTO federal register (Principal and Supplemental), state trademark registries, common-law sources (business names, domain names, social media), and international registers if use abroad is planned.

The USPTO’s TESS database allows searching by word mark, design code, goods/services, owner, and serial/registration number; the new Trademark Search system replaced TESS in 2023.

Design search codes (e.g., 01 for celestial bodies, 02 for humans) are used to search design marks; the USPTO’s Design Search Code Manual is the authoritative reference.

The “knock-out” search is a quick search of the federal register for identical or near-identical marks in the same class before investing in a full clearance search.

The likelihood-of-confusion analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) lists 13 factors (the du Pont factors) considered by the TTAB.

The strength of a mark spectrum: fanciful > arbitrary > suggestive > descriptive > generic; only the first three are inherently distinctive and registrable on the Principal Register without proof of acquired distinctiveness.

A search opinion should identify blocking marks, assess the risk of confusion, and recommend whether to proceed, adopt a different mark, or seek a consent agreement.

Common-law rights can be searched through business directories, Secretary of State filings, domain registrars, and social media platforms; these rights can block registration under § 2(d) if they predate the applicant’s use.

For intent-to-use applications, the clearance search should be conducted before filing because the filing date becomes the constructive use date, but actual use must still be bona fide.

A U.S. trademark application must include: the applicant’s name and address, a clear drawing of the mark, a list of goods/services, the filing basis, and the filing fee per class.

Filing bases: (1) use in commerce under § 1(a), (2) intent to use under § 1(b), (3) foreign registration under § 44(e), (4) foreign application under § 44(d), and (5) Madrid Protocol extension under § 66(a).

The § 44(d) priority claim must be filed within six months of the first foreign application; the § 44(e) basis requires a copy of the foreign registration and a translation if not in English.

The goods/services identification must be specific and definite; the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) provides pre-approved wording.

The filing fee is $250–$350 per class for TEAS Standard (as of 2024), with TEAS Plus requiring compliance with the ID Manual and electronic filing for a lower fee.

A drawing must be a clear image of the mark; for word marks, standard character drawing (no stylization) provides broader protection than a special form drawing.

The “intent-to-use” application requires a verified statement of bona fide intent; filing without such intent can invalidate the application (see § 1(b)).

The Madrid Protocol allows a U.S. applicant to file an international application through the USPTO, designating member countries; the USPTO forwards it to WIPO within two months.

The “use in commerce” basis requires a specimen showing the mark as used in commerce; for goods, the specimen can be packaging, labels, or tags; for services, it can be advertising or website screenshots.

The USPTO examines applications in order of filing; the examiner reviews for compliance with formalities, substantive registrability, and likelihood of confusion.

The examination process includes a search of the register for conflicting marks, a review of the goods/services, and an assessment of the mark’s distinctiveness.

If the examiner finds issues, they issue an Office action (non-final); the applicant has six months to respond, with the option to request a three-month extension for good cause.

The examiner may issue a final Office action if the issues are not overcome; the applicant can then appeal to the TTAB or file a request for reconsideration.

The TTAB appeal process involves filing a notice of appeal, a brief, and an oral hearing if requested; the TTAB reviews the examiner’s decision de novo.

The publication period is 30 days after approval for publication in the Official Gazette; third parties may file an opposition or a request for extension of time to oppose.

For intent-to-use applications, a Notice of Allowance issues after publication; the applicant has six months to file a Statement of Use, with extensions up to 36 months total.

The registration certificate issues after the Statement of Use is accepted or after the opposition period expires for use-based applications.

The USPTO may issue a suspension letter if a prior-filed application or registration blocks the current application; the applicant must respond to the suspension inquiry.

A non-final Office action requires a response within six months; failure to respond results in abandonment of the application.

A response to an Office action must address every ground of refusal; arguments and amendments must be clear and supported by evidence if necessary.

Common refusals: § 2(d) likelihood of confusion, § 2(e)(1) merely descriptive, § 2(e)(2) primarily geographically descriptive, § 2(e)(3) primarily geographically deceptively misdescriptive, § 2(e)(4) primarily merely a surname, § 2(e)(5) functional, and § 2(a) false connection.

A § 2(d) refusal can be overcome by arguing dissimilarity of marks, dissimilarity of goods/services, or lack of evidence of likelihood of confusion; a consent agreement from the prior registrant may also overcome.

A descriptiveness refusal can be overcome by amending to the Supplemental Register (if the mark is capable of distinguishing) or by submitting evidence of acquired distinctiveness under § 2(f).

Evidence of acquired distinctiveness can include: advertising expenditures, sales figures, length of use, consumer surveys, and unsolicited media coverage.

A final Office action can be appealed to the TTAB; alternatively, the applicant can file a request for reconsideration with the examiner, but this does not stay the appeal deadline.

The examiner’s amendment may be proposed to resolve issues; the applicant must review and agree to any examiner’s amendment.

A response to a suspension inquiry must include a status update on the blocking application/registration and may include a request to suspend again.

Publication in the Official Gazette occurs after the examiner approves the mark; the opposition period is 30 days from publication.

A notice of opposition must be filed within 30 days; a request for extension of time to oppose can extend the period up to 90 days, with further extensions possible.

An opposition is a TTAB proceeding; the opposer must plead grounds (e.g., likelihood of confusion, descriptiveness) and the applicant may file an answer.

The TTAB’s opposition procedure includes discovery, trial, and briefing; the TTAB may grant summary judgment or conduct an oral hearing.

Cancellation proceedings can be filed by any person who believes they are or will be damaged; a petition to cancel must be filed with the TTAB.

A cancellation petition can be based on grounds such as abandonment, fraud, genericness, or likelihood of confusion; the petitioner must plead with particularity.

The burden of proof in cancellation is on the petitioner; in opposition, the opposer has the burden of proving grounds.

The TTAB’s decision in an opposition or cancellation can be appealed to the U.S. Court of Appeals for the Federal Circuit or to a district court.

The Trademark Modernization Act of 2020 created ex parte expungement and reexamination proceedings, which allow third parties to challenge registrations for nonuse or for never having been used.

A § 8 declaration of continued use must be filed between the 5th and 6th year after registration; a grace period of six months is available with a surcharge.

A § 15 declaration of incontestability can be filed after five years of continuous use; it provides conclusive evidence of the mark’s validity and exclusive right to use.

A § 9 renewal application must be filed every 10 years; a grace period of six months is available with a surcharge.

The USPTO requires a specimen of use with the § 8 declaration; the specimen must show the mark as used in commerce for the goods/services.

Failure to file a § 8 declaration results in cancellation of the registration; failure to file a § 9 renewal results in expiration.

The Madrid Protocol requires a declaration of intention to use the mark in commerce for extensions; the USPTO must be notified of changes in ownership.

The USPTO’s post-registration audit program randomly audits registrations to verify use; failure to respond can result in cancellation.

A § 7 amendment can be filed to correct errors in a registration; a § 12 amendment can be filed to add goods/services (only for use-based applications).

The “five-year” period for § 15 starts from the date of registration; the “ten-year” period for § 9 also starts from the date of registration.

The test for infringement under the Lanham Act is likelihood of confusion; courts consider factors such as mark similarity, goods similarity, and consumer sophistication.

The Polaroid factors (Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)) are commonly used to assess likelihood of confusion in the Second Circuit.

Remedies for infringement include injunctions, damages (actual damages, defendant’s profits), and attorney’s fees in exceptional cases.

The Trademark Counterfeiting Act of 1984 provides criminal penalties for trafficking in counterfeit goods; civil remedies include statutory damages up to $2,000,000 per mark in counterfeit cases.

The Trademark Dilution Revision Act of 2006 (TDRA) provides a federal cause of action for dilution by blurring or tarnishment for famous marks.

The TDRA requires the mark to be famous and distinctive; the defendant’s use must be in commerce and likely to cause dilution.

The Digital Millennium Copyright Act (DMCA) does not apply to trademarks; however, the Anti-Cybersquatting Consumer Protection Act (ACPA) addresses bad-faith domain name registration.

The Lanham Act’s § 43(a) prohibits false advertising and false designation of origin; it can be used to challenge misleading claims about a product.

The doctrine of trademark misuse is a defense to infringement; it requires the plaintiff to have used the trademark to violate antitrust laws.

Under the USPTO Rules of Professional Conduct (37 C.F.R. § 11.101 et seq.), a practitioner must be competent, diligent, and communicate with the client.

A practitioner must not file an application without a bona fide intent to use the mark in commerce; filing without intent can violate the duty of candor.

The duty of confidentiality under § 11.106 prohibits revealing client information without informed consent, except as required by law.

A conflict of interest under § 11.107 arises when the representation of one client is directly adverse to another client; informed consent is required.

A practitioner must not make false or misleading statements to the USPTO; this includes submitting false specimens or declarations.

The USPTO’s Office of Enrollment and Discipline (OED) investigates ethics complaints; sanctions can include reprimand, suspension, or disbarment.

A practitioner must advise the client about the risks of using a mark without clearance and the benefits of federal registration.

The duty of candor requires disclosing material information to the USPTO, such as prior registrations or known conflicting marks.

A practitioner must not engage in unauthorized practice of law; only licensed attorneys or registered patent/trademark practitioners can represent clients before the USPTO.