Step 4: Examine in The E5 Trademark Process
The fourth step in the E5 Trademark System is the Examination Step. And here’s where all the hard work that went into that Evaluation step [Step 2] — you know where you had that search done — and in that Equip Step [Step 3] where you prepared to file for your trademark application and then you actually file for it — really pays off! The Examination Step includes three distinct phases.
The first phase is going to be an examination by the Trademark Office. And, as you saw in another video, that typically takes about five to eight months. The second phase is a public examination, and as you also saw in a previous video, that can take one to five months (or even more). Ideally, it should only take one month because there’s really a 30-day window for the public to do what’s called “oppose the mark” but that can be extended for various reasons by people who are either just messing with you, or who really might have a legitimate reason to oppose your mark. Then there’s this [third] publication phase. And this is on autopilot, awkward, usually a month to month and a half period where you’re just waiting on your mark to publish. It’s not really actually registered yet. But let’s go into these in a little bit more detail so you can see why and how all that work that you did and that Evaluate Step and Equip Step pays off so much here in the Examination Step.
First, within the Trademark Office they’re going to examine your application for really two things: (1) whether it’s [the application] going to be in the proper form and format, and then (2) they’re going to look at the substance of what you’re asking for in that trademark application. As to the proper form, this ties directly back in to what you prepared in the Equip Step. Whether your trademark description is correct, whether the description of the goods and services that you’re selling or correct, the sample that you submit — is it proper in the context of your descriptions and what you’re showing. And then they’re also going to look at the substance of what you’re trying to register: it is it too similar to another mark, or is it just too generic to be allowed at all [questions they ask]. And that boils down to this issue, this concept called “the likelihood of confusion.” Because, remember — your mark isn’t there to protect you, it’s there to protect the consumer.
In the public examination phase, that’s the public’s opportunity to comment on or object to your mark. It begins with this “opposition period” — what we were just talking about — the thing that could last for a month, that could be extended. And here’s what you’re hoping against — that’s an Opposition Proceeding. An Opposition Proceeding: it’s kind of like a little mini trial, and it can go so far as to take place in a trial format with the Trademark Trials and Appeals Board in Washington DC [actually, it’s in Alexandria, VA]. Guess what? That’s not cheap! So you hope when you’re preparing these [applications] that this doesn’t happen. But, you can plan to keep it from happening by doing the right things in the Evaluate Step and the Equip Step. I’m just going to keep going back to those [two Steps] over and over in these videos. The third phase is the Publication Phase that we’ve already discussed. Now there’s only one more step left in the E5 Trademark System — in this brief introduction. So, we’ll cover that next, and that’s Enforcement. It’s what happens after you get your mark registered, and what happens if [when] you catch somebody using your mark and [but!] you haven’t registered it yet [MUCH harder!]. We’re going to cover those in the next video see you there.
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