UNDERSTANDING THE TRADEMARK REGISTRATION PROCESS

The purpose of this article is to explain the timeline of the trademark registration process. The trademark registration process can be separated into stages.  The attorneys at The Plus IP Firm will shepherd your trademark application through these stages.  Please read this article if you would like to learn more about the United States trademark registration process.

STAGE 1 (3-4 months) – PRE-EXAMINATION WAITING PERIOD   

After a trademark application has been filed with the United States Patent and Trademark Office (“USPTO”), the application enters into a cue where the application waits to be assigned to an examining attorney. Typically, the USPTO will assign an application to an examining attorney within 3-4 months of the trademark application filing date.

STAGE 2 (3-6 months) – EXAMINATION PERIOD

After a trademark application is assigned to an examining attorney, the examining attorney will examine the trademark application to determine if the application meets the legal requirements for registration of the applied for mark. If the legal requirements are met, then the examining attorney will approve the trademark application of the applied for mark for publication and the trademark application will move into the Opposition Period. If the legal requirements are not met, then the examining attorney will send to your attorney correspondence, known as an “Office Action”. If an Office Action is sent to your attorney, then at that time your attorney may submit a Response to the Office Action within six months of the filing date of the Office Action.  In many cases, a Response to an Office Action will include legal arguments why your application should be allowed.  If the examining attorney agrees with the arguments presented in the Response to the Office Action, then the examining attorney will approve the trademark application of the applied for mark for publication and the trademark application will move into the Opposition Period. If an examining attorney disagrees with the arguments presented in the Response to the Office Action, then an Appeal Brief may have to be filed with the Trademark Trial and Appeal Board in order to register your mark.  Consulting with one of the trademark attorneys at The Plus IP Firm greatly reduces the risk of filing a trademark application that will face an unforeseen legal obstacle at the USPTO.

STAGE 3 (6-8 months) – OPPOSITION PERIOD  

If the examining attorney believes the applied for mark meets all legal requirements and is registerable, then the examining attorney will approve the mark for publication in the Trademark Official Gazette (“TMOG”).   TMOG is published each Tuesday and contains information for each mark published.  After an applied for trademark is published in the TMOG, anyone who believes they may be harmed by the registration of the applied for trademark may object to the registration of the applied for trademark by filing an opposition to the registration within thirty (30) days of the date the applied for mark was published in the TMOG.

STAGE 4 (8-12 months) – POST-OPPOSITION PERIOD

For Use-based trademark applications (applications filed when the applied for trademark is already in use), if no opposition was filed during the opposition period, then the USPTO will issue a Registration Certificate.  It usually takes about six weeks after the end of the Opposition Period for the USPTO to issue a Registration Certificate.

For Intent-to-Use trademark applications (applications filed when the applied for trademark is not in use), if no opposition was filed during the opposition period, then the USPTO will issue a Notice of Allowance. A Notice of Allowance is a written notification from the USPTO that specifies a mark has survived the Opposition Period following publication and has consequently been allowed.  After receiving a Notice of Allowance, a Statement of Use or an Extension of Time to file a Statement of Use must be filed within six months.  A Statement of Use must demonstrate that the mark is being used in commerce.  If you have begun using the applied for mark in commerce, then a Statement of Use will be filed.  If you have not begun using the applied for mark in commerce, then an Extension of Time to file a Statement of Use will be filed.  A total of five (5) Extensions of Time may be filed.  After filing a Statement of Use, within approximately two (2) months, the USPTO will issue a Registration Certificate.

The attorneys at The Plus IP Firm have experience in preparing and filing hundreds of trademark applications on behalf of their clients.  The attorneys at The Plus IP Firm are available to assist you if you have not filed an application or have questions regarding an already filed application.  If you have any questions, please do not hesitate to contact one of the trademark attorneys at The Plus IP Firm. To read more about Derek Fahey, the author of this article, click here.

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