Common Law Rights in Trademark Approval
Many prospective trademark applicants wrongly assume that the Examining Attorneys at the Trademark Office, when conducting trademark searches for the applicant’s proposed mark, will search common law rights (i.e., use rights and unregistered rights) along with the registered and pending marks.
The Examining Attorneys at the USPTO lack the resources to conduct common law searches. As a result, when an applicant fails to conduct a comprehensive search prior to filing for a trademark, you could wind up investing time and resources to register the trademark at the federal level, but that mark may still be infringing on a third party’s trademark rights at the common law level.
How Common Law Can Muck Up Your Mark
The United States adheres to a “first to use” trademark system, not a “first to file” system like many other countries. As a result, common law rights (i.e., use rights) are important and should not be neglected.
For example, if a third-party individual or company possesses senior common law rights, they may be able to initiate a proceeding with the Trademark Trial and Appeal Board to either oppose your pending trademark application or cancel the trademark registration altogether.
This can be particularly frustrating since the third-party individual or business with senior common law rights does not need to have filed or registered the mark. Rather, they simply must have used the mark in commerce before your application is filed.
As mentioned, it is extremely important for applicants to conduct common law searches in advance of filing a trademark application with the USPTO.
Increase in Trademark Applications
The Trademark Office has been experiencing a large surge of trademark applications in the past few years, largely due to the proliferation of e-commerce sites. For example, the USPTO received over 92,000 trademark applications in December 2020, which is an increase of 172 percent over December 2019.
As a result of this massive uptick in application filings, you need to be patient when filing your trademark application. Typically, pre-surge, it would take less than four months for an Examining Attorney to be assigned and to issue an Office Action. Nowadays, the wait time is between seven and eight months for a full review of a trademark application and issuance of an Office Action. Other delays have occurred with Responses to Offices Actions, review of Statements of Use, and post-registration review.
For example, post-registration processing, which prior to the Coronavirus pandemic, typically took around thirty days for review by an Examining Attorney, is taking between 60 and 90 days during the pandemic and surge in applications.
Need Help with a Trademark Application? Contact Omni Legal Today
An experienced trademark attorney at Omni Legal Group will assist by researching your trademark and filing your federal trademark application. We are here to guide and assist you through the entire trademark registration process.
Have Questions? Contact an Experienced and Reputable Trademark Attorney in Los Angeles Today
If you are looking for professional assistance in completing a comprehensive trademark search and filing a trademark application, contact an experienced trademark lawyer at the reputable Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation, please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.