Filing a trademark application with the U.S. Patent and Trademark Office (USPTO) starts an often complex and lengthy legal proceeding that continues for approximately eight or twelve months. A timeline of the most critical stages is helpful to understanding the overall process.
Initial Filing and Examination Process
You can file a Use-Based application or an Intent-To-Use application using the Trademark Electronic Application System (TEAS). It is important to monitor the status of your application through the Trademark Status and Document Retrieval (TSDR) system every three to four months after your initial filing. Three to five months after your application is filed, the trademark is assigned to a USPTO trademark examining attorney. The examining attorney will review your application for compliance and compare your trademark to pre-existing trademarks to ensure there is no confusion or conflicts that could block registration.
The Publication Process
If the examining attorney has no objections to registration, the examining attorney will approve your trademark for publication in the USPTO’s periodical, the Official Gazette. Four to six weeks after this approval, your application will be published for a thirty-day opposition period. Anyone who opposes the registration must file a Notice of Opposition or request an extension to file an opposition within thirty days of the publication date. If an opposition is not filed or is unsuccessful, your application moves on to the next stage. It can take up to four months from the notice of publication before you receive notice of the next status of your application.
If the examining attorney determines that your trademark should not be registered, the examining attorney will issue an Office Action explaining the reasons for refusal. You must respond to the Office Action within six months of the mailing date of the Office Action or your trademark application will abandon. If there are only minor corrections needed, the examining attorney may contact you by telephone or email to resolve.
Registration of Your Trademark
If an opposition has not been filed, four to six weeks after the opposition period ends the USPTO will issue a Certificate of Registration for a Use-Based application or a Notice of Allowance for an Intent-to-Use application. When you receive a Notice of Allowance, you must file a Statement of Use (SOU) or request an extension within six months from the date the notice was issued. If not, your application will abandon. Failure to overcome all objections will result in a final refusal. You may appeal a final refusal to an appeal board for an additional fee. More information about the trademark process can be found on the USPTO’s website.
There are many stages of the trademark application process, each with a different set of requirements and implications. A trademark attorney who is knowledgeable about the process can offer skilled representation and increase the likelihood of successful trademark registration. Please contact us for a consultation about your trademark application.