Trademarks Registration Process

This post explains the timeline of the registration process for registration of a trademark, service mark or trade dress (collectively referred to as “trademark”) with the United States Patent and Trademark Office (“USPTO”). The attorneys at The Plus IP Firm help clients shepherd their trademark application through the stages of the trademark registration process.  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 an applicant files a trademark application with the USPTO, the application enters a cue and waits to be assigned to an examining attorney. Typically, the USPTO assigns an application to an examining attorney within 3-4 months from the date an application has been filed.

STAGE 2 (3-6 months) – EXAMINATION PERIOD

Once the USPTO assigns an examining attorney to examine a trademark application, the examining attorney examines the trademark application during the examination period.  During the examination period the examining attorney determines if an application satisfies the legal and administrative requirements for trademark registration. If the application satisfies the legal requirements and administrative requirements, then the examining attorney will approve the trademark application for publication and the trademark application will move into the Opposition Period. If the trademark application fails to meet the legal and administrative requirements, then the examining attorney will send the applicant correspondence, known as an “Office Action”. If an Office Action is sent, then at that time an applicant 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 the USPTO should allow the applied for mark to be registered.  In many cases, the legal arguments required to overcome a rejection may be complex and using a trademark attorney is recommended for the highest probability of overcoming the rejection.  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 need 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 determines that the applied for mark satisfies all legal and administrative requirements for registration of the mark, 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 being used in commerce), if no third party filed an opposition 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 third party filed an opposition during the opposition period, then the USPTO will issue a Notice of Allowance. A Notice of Allowance is written notification from the USPTO that specifies that no third party opposes registration of the applied for mark and as a result the USPTO will allow registration of the mark.  After receiving a Notice of Allowance, an applicant must file within six months a Statement of Use or an Extension of Time to file a Statement of Use.  A Statement of Use is required to demonstrate that the applied for mark is being used in commerce.  If an applicant has begun using the applied for mark in commerce, then an applicant should file a Statement of Use.  If an applicant has not begun using the applied for mark in commerce, then the applicant should file an Extension of Time to file a Statement of Use.  A total of five (5) Extensions of Time may be filed.  After an applicant files a Statement of Use, the USPTO will issue a Registration Certificate within approximately two (2) months.

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 NY and Tri-State Area clients with filing trademark applications or answering questions regarding an already filed trademark 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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