After Filing Your Trademark Application

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Filing your trademark application is not the end of the registration process. Securing a registered trademark can be a complex and time-consuming endeavor, and unfortunately filing the application is only the beginning.

Your Responsibilities After Filing

After you file your trademark application, it is critical to monitor its status. If you hire an attorney, your attorney should do this for you, helping to ensure that your application moves through the USPTO as it should.

While you should check the status of your application regularly, there is little sense in doing so frequently. The USPTO recommends checking the status of your application every 3 to 4 months, so checking on it every day will probably only serve to frustrate you.

Your trademark application will move exasperatingly slow through the USPTO’s office, but you should keep in mind the number of trademark applications the USPTO has to evaluate and that you are, after all, dealing with the federal government. The whole process for a successful application can take 12 to 18 months.

The Examining Attorney

After your application is filed, the USPTO will assign one of its examining attorney to review your application. This will likely not happen, however, until about 3 months after you submit your application.

The examining attorney will determine whether your mark is registrable and whether your application meets all federal legal requirements. If the examining attorney finds any deficiencies in the application, he or she may issue an office action, which essentially notifies you of any problems the examining attorney has found with your application.

Office Actions

If, after evaluating your application, the examining attorney issues an office action, that does not necessarily mean that your application has failed. Many problems can be fixed and will simply require clarification or minor amendments. Others, however, can result in the rejection of your application, requiring you either to abandon your efforts or start over and resubmit your application with a new application fee.

Once an office action is issued, you have a limited time to respond, generally 6 months. Making a proper response to an office action is critical to ensuring that a viable application is not scrapped due to a technicality. This is where the assistance of an attorney can be invaluable. While some technicalities are insurmountable, others can be addressed appropriately so as to save the application. Having an attorney involved from the beginning can further reduce the likelihood of having to submit your application multiple times and can in fact help you avoid entering an application for a trademark that would never be registrable.

Publication for Opposition

If the examining attorney finds no basis for an office action or if any issues brought by an office action are resolved, the examining attorney will approve the mark for publication in the Official Gazette. The Official Gazette is a weekly public online publication of the USPTO that publishes new trademarks applying for registration.

The USPTO will inform you of its intention to publish your mark in the Official Gazette approximately 3 weeks prior to its publication. This publication provides the public with the opportunity to object to the registration of your mark.

If a member of the public believes that your mark will infringe on his own trademark, he has 30 days to object to the registration by filing an opposition with the USPTO. An opposition is an adversarial proceeding, similar to a court trial, held before the Trademark Trial and Appeal Board. Here, the individual objecting will have the opportunity to make his case, and you will have the opportunity to respond.

Final Steps in Your Trademark Application

If there is no opposition or you have overcome any opposition, your trademark application moves to the next step. If you filed a use-in-commerce application, then your work is over. The USPTO will likely register your trademark within 11 weeks after its publication in the Official Gazette.

If, however, you filed an intent-to-use application, your work has not ended. The USPTO will generally issue a Notice of Allowance to you within about 8 weeks of publication of your mark. A Notice of Allowance indicates that the USPTO has declared the mark registrable, but it does not mean that it has been registered.

To register your mark after receiving a Notice of Allowance, you must, within 6 months, either begin using the mark in commerce and submit a Statement of Use or request a 6 month extension. If you submit a Statement of Use and the USPTO approves it, your mark will then be registered.

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Sources:

Protecting Your Trademark: Enhancing Your Rights Through Federal Registration

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See Also:

Intellectual Property

Bases for Trademark Applications