Colin Kaepernick Files For Trademark Protection
As reported by ESPN, Colin Kaepernick, through his company Inked Flash, has filed an application to register for trademark protection of a black and white image of his face. Kaepernick, the former quarterback of the San Francisco 49ers, has been a free agent since 2016, a year in which he began kneeling during the national anthem to protest police brutality, racism, and social inequality.
Kaepernick’s trademark application comes on the heels of a Nike ad campaign featuring Kaepernick, including a close-up photograph of his face with the caption: "Believe in something, even if it means sacrificing everything.”
This high profile trademark application is a good opportunity to walk through what could happen after an application has been filed. Which is to say, how the United States Patent and Trademark Office (USPTO) may respond to the application.
If you’re still thinking about whether to register your trademark, you may find this post helpful.
You’ve Filed Your Application—Now What?
Once a trademark application has been filed, it will be assigned to an examining attorney at the USPTO. But be prepared for this process to take a number of months.
Eventually, the examining attorney will review the application to determine whether it complies with the formal requisites for an application, as well as whether it’s in fact eligible for registration. A complete review will include a search for any conflicting trademarks and an examination of the application.
You May Need To Respond To An “Office Action” Letter
Depending on the results of the review, the examining attorney may issue an “Office Action”—an official letter listing any legal problems with the trademark application.
Office actions are either “nonfinal,” in which case it raises a legal problem with your application for the first time, or “final,” in which case it raises a legal problem with your application for the last time. Typically, you must respond to an Office Action within six months, though some types have shorter deadlines. You should always read your Office Action to ensure you file a timely response.
The types of legal problems that may be identified in an Office Action can be broadly split into two categories: “Requirements” and “Refusals.” Each one is addressed in more detail below.
Office Action Requirements
“Requirements” are typically technical problems with the application. One example of a common Requirement is the need to “disclaim” a portion of the trademark. This occurs when a particular term or design in your trademark needs to be used by other people or businesses—like “restaurant”—to describe their goods, services, or businesses. So, if your application was to trademark Rendezvous Restaurant, you’d surely be required to disclaim “Restaurant.” The reason being that other businesses need to use the term “Restaurant” to describe their, well, restaurants.
Office Action Refusals
“Refusals” are typically substantive problems with the application. One example of a common Refusal is a “likelihood of confusion.” This Refusal is made when, after searching the USPTO database of registered trademarks, the examining attorney decides that your mark is similar to another mark used for goods or services that are related to your own goods or services. While you can respond to this type of Refusal, you’ll need to convince the examiner that either your mark differs from the already registered trademark or that your goods or services differ from those in the already registered trademark.
If Your Application Is Denied…
If, after responding to an Office Action(s), your application is ultimately denied, the examining attorney will issue a final refusal. At that point, you still have the option, for an additional fee, to appeal this decision to the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative board that decides a number of trademark matters, including final refusals issued by the USPTO. If you haven’t used an attorney up to this point, you would be wise to consider doing so for any appeal, as the TTAB is an adjudicatory body similar to a court.
If Your Application Is Approved…
Hopefully, your application will ultimately be approved, even if you have to respond to an Office Action (or several). Once the examining attorney approves your application, your mark will be published in the “Official Gazette,” a publication of the USPTO.
After the mark has been published, any party who thinks it could be harmed if the mark is registered has thirty days to oppose the registration. If no party files an opposition, then what happens next depends on whether your application was based on (1) use of the mark, or (2) intent to use the mark.
Use Of The Mark
This is the straightforward option. If your application was based on use of the trademark in commerce, and if no party opposes it, the USPTO will register the mark and send you a certificate of registration. From there, it’s up to you to maintain the federal registration.
Intent To Use The Mark
This is the more complicated option. If your application was based on your intent to use the trademark in commerce, and if no party opposes it, the USPTO will issue a “notice of allowance” around 2 months after the publishing date. What this means it that the trademark has survived the opposition period following publication—not that the mark has registered. So don’t stop here!
After the notice of allowance is issued, you have 6 months to use the trademark in commerce and submit a “statement of use” (SOU) to the USPTO. For more information on the contents of an SOU, you can refer to the USPTO’s website. About 2 months after the SOU is approved, the USPTO issues a certificate of registration. From there, it’s up to you to maintain the federal registration.
In an ideal world, your application would be approved with no Office Action or other resistance. But, if you’re forced to respond to an Office Action, it may be worth at least consulting a knowledgeable attorney. You might be perfectly capable of filing a strong response, but the amount of time it would take you to do so may not be worth it, given the opportunity cost for you and your business.