After you file an application for a federal trademark registration, you need to wait for the USPTO to begin processing. The entire process usually takes 9-12 months but can take longer if complications or “office actions” arise. This article explains the steps that an application for a federal trademark follows.
After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned.
If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
A certificate of registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.
If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either: (1) Use the mark in commerce and submit a statement of use (SOU); or (2) Request a six-month extension of time to file a statement of use (extension request).
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have been filed based on an intent-to-use a mark in commerce under Trademark Act Section 1(b).
The Applicant has six (6) months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. Please review the additional information for the statement of use and extension request processes.
If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6-month increments, the applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the notice of allowance and subsequent requests before the expiration of a previously granted extension.
If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a statement of use and the required fee(s) within 6 months from the date the notice of allowance issued to avoid abandonment. The applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.
If the applicant does not file a statement of use or extension request within six (6) months from the date the notice of allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within two (2) months of the abandonment date.
If the minimum filing requirements are met, the statement of use is forwarded to the examining attorney. The examining attorney conducts a review of the statement of use to determine whether federal law permits registration. The applicant cannot withdraw the statement of use and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the statement of use.
If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately 2 months. If all issues are not resolved, the application will abandon.
Within approximately two months after the SOU is approved, the USPTO issues a registration. To keep the registration “live,” the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration.