This post provides a guide to the trademark registration process, giving you an overview of what happens after your application for federal registration of your trademark rights has been submitted. The United States Patent & Trademark Office (the USPTO) processes applications for federal registration of trademark rights.
Photo by Filip Mroz on Unsplash
You Submit Your Application
- Once your application for federal trademark registration has been completed, it is filed. Once the application has been filed, it will be entered into the USPTO database and await examination.
- This is the first step in the trademark registration process.
- It takes about 9-11 months from the time you submit your trademark application until the USPTO reviews your trademark application. During this time you will hear no news from the USPTO. Don’t panic, this is normal.
- Your trademark application enters the public record. People can access this information, and at this point in the trademark registration process you might be targeted by scammers. Avoid them, and if you have concerns, talk to an attorney.
The USPTO Reviews Your Application
- Your trademark application will be assigned to an examiner who will determine whether your trademark can be registered. The examiner will look to see if the mark is descriptive, potentially confusing with other registered marks, is the title of a single work or merely ornamental, among other things.
- The examiner may take up to a month to complete this examination. Often, they complete the process faster.
- This represents the most challenging part of the trademark registration process. Applicants that neglect a thorough trademark search or who pick a mark that cannot be registered often end the trademark registration process when the examiner denies their application.
The USPTO Either Approves Your Mark For Publication Or Issues An Office Action
- If the examiner finds no problem with your mark then your mark will approved for publication and your application moves to the next step in the trademark registration process. However, if the examiner finds grounds to refuse your mark or if your trademark application suffers defects, you will receive an Office Action.
- If you receive an Office Action, the USPTO requires a formal response to the Office Action. Failing to respond abandons your application.
- If you haven’t begun using your trademark, the trademark registration process is slightly different. If you have not begun using your trademark as of the time of filing, you will have filed an “intent to use” trademark application. This means that instead of simply approving your trademark application, the examiner will issue a Notice of Allowance.
- After you have received a Notice of Allowance, you have 6 months to show trademark usage. If obstacles prevent this from happening, you may file 6 month extensions.
If You Receive An Office Action
Not all trademark applications receive an Office Action. But if yours does receive an Office Action, the USPTO requires a complete and proper response to continue the trademark registration process.
- If you receive an Office Action, your response must address each issue raised by the examiner to avoid refusal. You have 6 months to respond. A failure to respond abandons your trademark application. Abandoned applications have 2 months to file a Petition for Revival to continue the trademark registration process. The USPTO requires additional fees to revive abandoned applications.
- Office Actions often present complex legal issues. We recommend consulting an attorney to understand your options.
- If the Examiner accepts your response to the Office Action, your mark moves to publication. However, if the USPTO rejects your response, then the USPTO will issue a final action. You may file an appeal with the Trademark Trial and Appeal Board (TTAB) and/or a response to the final action.
Publication in the Official Gazette and Opposition
- Publication allows others to challenge your application. This occurs for a variety of reasons.
- When the USPTO approves your application for publication, it will appear on the Official Gazette for 30 days, and it will be up for anyone to oppose. However, the length of time may be longer because an opposer may file an extension of time to oppose, in which case they can get 30-90 more days to file an opposition to your application.
Trademark Registration
- This ends the trademark registration process.
- You can use the ® symbol.
- Once your trademark has been registered, you will enjoy the benefits of trademark registration.
Maintain Your Trademark
Once your mark has been registered you will need to protect and maintain your trademark to truly get the benefit of your trademark registration.
