What is the application process?

A US design patent filing (preferably an electronic filing) must include the names and nationalities of each inventor that substantively contributed to the design to be protected, and the application will also need to identify the name and address of the applicant (owner) of the filing. The application typically comprises a brief identification of the design and, more importantly, a series of drawings showing views of the design to be protected. The Patent Office strictly enforces its rules regarding the clarity and quality required for design patent drawings.

The US is a signatory to the Hague Agreement, so foreign applicants can sometimes secure certain procedural and administrative benefits by filing design patents in the US via the Hague Agreement.

A US trademark application (preferably an electronic filing) must include details identifying the applicant along with a listing of the specific goods and services to be included in the application. The US Trademark Office is extremely particular about the language used to describe the goods and services, and applicants are strongly encouraged to use only language that has been pre-approved by the Trademark Office. The use of differing language will most likely result in an initial rejection of the application and increased prosecution costs. An application can be filed before the mark has been used in the US marketplace on all the listed goods and services (an intent-to-use application) or can be filed after use has commenced on all the listed goods and services (a use-based application). However, before the application will mature into a registration, the mark must actually be used in the marketplace on all the listed goods and services, and the applicant must provide documentation meeting the stringent requirements of the Trademark Office demonstrating the use of the mark in the US marketplace.

The US is a signatory to the Madrid Protocol, so foreign applicants can sometimes secure certain procedural and administrative benefits by filing trademark extensions in the US via the Madrid Protocol.

The US Copyright Office is still in the process of transitioning from a paper-only filing system to a hybrid system in which applicants can choose the filing methodology. The Copyright Office uses different forms for different types of works (written work, visual work, music, software, etc). The instruction forms provided on the website are quite good so, depending upon the complexity of the work and authorship, hiring counsel may not be necessary (the same cannot be said for patent or trademark filings).

The US is a signatory to the Berne Convention so foreign applicants can sometimes secure certain procedural and administrative benefits by utilising the Berne Convention to assert and enforce copyright rights in the US.

Examination and appeals

How are the examination and appeals procedures conducted?

The US is a ‘substantive examination’ jurisdiction for design patents, meaning that, before grant, a design patent application is substantively examined to ensure that the invention is both new (or novel) and not an obvious modification or improvement over the prior art. In addition to the substantive examination, the drawings and filing papers will be reviewed to ensure compliance with formality requirements. Unlike utility patent prosecution, the existence of a design patent and the contents of the prosecution file remain secret and unavailable to the public until the first US design patent in the patent family is granted. While engaging patent counsel is not required, it is strongly recommended that applicants engage counsel experienced in the subtleties of design patent practice and procedure.

Substantive rejections of US design patents are rare, but administrative and procedural rejection is not uncommon, such as objections to drawings or descriptive language included in the application.

If an application is substantively rejected, several levels of appeal are available, including first an appeal to the Patent Trial and Appeal Board (an administrative tribunal within the Patent Office) and then an appeal to the federal court system, starting with the Federal Circuit and, ultimately, the US Supreme Court. 

Each trademark registration application is reviewed by an examining attorney to ensure compliance with the administrative requirements, and an objection to the description of goods and services is a common basis for an initial refusal of the application. The Trademark Office publishes a Trademark ID Manual, which lists pre-approved language for identifying an applicant’s goods and services. Any variation from the pre-approved language will typically draw a rejection. The trademark examining attorney will also substantively examine the application to determine whether the applied-for mark is likely to be confused with any existing registration or pending application. An applicant will typically be given two opportunities to overcome any administrative or substantive rejections to the application. 

If the applicant is not successful in securing the approval of the application after two rejections issued by the trademark examiner, then multiple levels of appeal of the rejection of the application are available. The first option is an appeal to the Trademark Trial and Appeal Board (an administrative tribunal within the Trademark Office). The success rate for an appeal of a final registration rejection to this tribunal is quite low (probably because the judges staffing this appeal board are mostly former trademark examining attorneys). Once the appeals within the Trademark Office are exhausted, an appeal to the federal court system is available, starting with an appeal to either the Federal Circuit Court of Appeals (and, ultimately, the US Supreme Court) or, alternately, under 15 USC, section 1071, to a trial level court for a de novo action in the District Court for the Eastern District of Virginia (and, ultimately, to the Court of Appeals for the Fourth Circuit and the Supreme Court). Exemplary recent cases include US Patent & Trademark Office v BV, 140 S. Ct. 2298 (2020), in which the trademark owner was represented by the author, and Peter v NantKwest, 140 S. Ct. 365 (2019), which involved a similar de novo appeal from a decision of the Patent Trial and Appeal Board under 35 USC, section 145.

The US also conducts both a substantive and administrative review of copyright applications. The most likely rejection to be encountered for a design rights copyright application is that the applied for work is not subject matter suitable for registration under the Copyright Statute.      

There is also an appeals process if a copyright application is denied. If the application is denied, the applicant can request two rounds of review from within the US Copyright Office, under 37 CFR, section 202.5A. The first request for reconsideration must be filed within three months of the original denial. If that request is unsuccessful, a second request for reconsideration can be filed within three months. If the application is still refused, the applicant can then file an infringement lawsuit in a United States District Court, as part of which notice must be provided to the Register of Copyrights (17 USC, section 411(a)).


What are the opposition rules?

Both the existence of and prosecution details of US design patent applications remain secret until the patent grants, so there is no formal ‘opposition’ process for an approved design patent application. However, once the patent has been granted, there are a variety of options for challenging the validity of a granted design patent before the Patent Trial and Appeal Board (PTAB) (an administrative tribunal administered by the Patent Office). The timing of the challenge and particular grounds or prior art relied upon to challenge the design patent will determine which of the available options to pursue, including a post-grant review or an inter-partes review. The PTAB judges are all experienced patent practitioners and litigators, and the controlling PTAB rules set strict time limits for PTAB proceedings, so, as compared to a traditional invalidation action before a federal court, PTAB challenges typically move faster than a traditional court filing and are decided by judges with many years of focused patent experienced.

Once a trademark registration application has successfully been approved by the examining attorney because the application meets the administrative and substantive requirements of the Trademark Office, it is published for opposition for a period of 30 days, and during this time any party who believes it will be damaged by the registration of the mark for the goods and services listed in the application may formally oppose the application before the Trademark Trial and Appeal Board (an administrative tribunal within the Trademark Office). Unlike many foreign opposition proceedings, a US trademark opposition is a contested proceeding controlled by the Federal Rules of Civil Procedure. This means that the parties are obliged to provide answers to written questions (interrogatories), provide documents responsive to specific requests and potentially sit for a formal deposition before a court reporter (collectively, discovery). In view of the discovery process, the costs for US trademark opposition are typically dramatically higher than the costs in other jurisdictions. Trials for oppositions are conducted on paper, without live witnesses, but parties can request oral presentations of arguments before the Trademark Trial and Appeal Board.

There are no administrative procedures for challenging copyright registrations.

Registration time frame

What are the registration time frames?

The initial term of a trademark registration is 10 years, but after five years, the registrant is obliged to submit proof that the mark is still in use in the US marketplace for all the goods and services listed in the registration. Goods and services no longer used in association with the mark can be (and statutorily need to be) deleted from the registration. Trademark rights have no inherent temporal limits, so as long as the mark continues in use in the marketplace for the goods and services listed in the registration, the registration can be renewed for an unlimited number of 10-year terms. 

The term of enforceability of a design patent is 15 years from its date of issue (35 USC, section 173). Because the term of a design patent begins upon the date of its issue, a patent owner can effectively extend the patent term for a design well beyond 15 years by filing multiple embodiments of the design right in the first application and then serially prosecuting each application. As one patent application nears grant, the applicant files a second application for one of the other embodiments disclosed in the original application. The patent term for the second patent will be 15 years from the grant date for the second application, which could easily be months or years after the grant date of the first patent in the design rights family. So, with creative filing strategies, a patent owner can secure protection for more than the traditional 15-year term.

As a general rule, for copyright works created after 1 January 1978, protection lasts for the life of the author plus an additional 70 years. For works made for hire, the copyright protection endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first (17 USC, section 302).

Removal from register

In what instances does removal from the register occur?

A granted design patent can be invalidated by filing an action in the federal court system or through a filing before PTAB. There exist many bases for seeking invalidation of a design patent, including errors in identifying the correct inventors, commission of fraud on the Patent Office during prosecution of the application, the existence of prior art showing that the claimed design is either not new (novel) or just an obvious modification of the prior art.

A trademark registration for a design will be removed if the registrant fails to file timely renewal and maintenance documents with the Trademark Office evidencing ongoing use of the mark on the goods and services listed in the registration. Filings are due upon the six-year mark after registration and 10-year intervals (10 years being the term of registration). Alternately, a registration can be removed via a cancellation proceeding if a third party believes that the mark has been abandoned and is no longer in use with the goods and services listed in the registration or based on a variety of substantive grounds including fraud in prosecuting the application or the potential for consumer confusion with pre-existing trademark rights.