How Does the Trade-Mark
Registration Process Work?
U.S. trademark
applications can take anywhere from 12-18 months from time of initial filing to
approval for registration. However, this timeline make take additional time
depending on the specifics of each application, the timeliness of responses by
the applicant and whether opposition proceedings are commenced and litigated.
Below is a summary of the general steps of a filing of a U.S. trademark
application with the USPTO.
There are two types of trademark registration
applications in the United States Patent and Trademark Office (USPTO).
Use Application
If you are engaged in “commercial use” of
your trademark, a “Use Application” may be filed. “Commercial Use” means that
you have sold or delivered goods, or rendered services in the United States
under the trademark. The application must state the date of first Commercial
Use and must include a “specimen” of the trademark. A specimen is digital image
of a label, packaging, photo of the product showing the trademark or
advertising of services showing the trademark and describing the services. When
your application is approved, your trademark is registered and the USPTO issues
a Certificate of Registration. Your trademark protection is retroactive to the
date of first Commercial Use stated in your application.
Intent-To-Use Application
If, like most applicants, you have not yet
started selling products or services in the United States at the time of
application, you may file an Intent-To-Use application. It does not require a
date of first Commercial Use or a specimen in the application. When your
application is approved, the USPTO issues a Notice of Allowance. You must then
file a Statement of Use indicating the date of first Commercial Use and
providing a specimen. Upon acceptance of the Statement of Use, your trademark
is registered and the USPTO issues a Certificate of Registration. Your
trademark protection is retroactive to the date of the application.
Screening and Filing
All services before the USPTO for your
trademark are conducted by our affiliated US attorneys. The Attorneys conduct a
screening of the USPTO database for identical or highly similar registered
trademarks that will likely block registration of your trademark and provide to
you a written report. If the screening concludes that an application is not
viable, the Attorneys will screen an additional trademark of your choice
without additional charge.
When your trademark has been successfully
screened, the Attorneys will prepare the application including the
identification of products or services. This can be an important decision
affecting approval of the application. If it is a Use Application, the attorneys
will assist in selecting a specimen and date of first Commercial Use. The
attorneys will electronically file the application and transmit any specimen.
The USPTO will assign a Serial Number to the application. The Attorneys are the
Attorneys of Record for the application and will handle all communications with
the USPTO until registration or final refusal.
Examining Attorney Review
A USPTO Examining Attorney will review the
application. It typically takes three to four months for your application to be
assigned to an Examining Attorney. Registration of your trademark will be
refused if the Examining Attorney concludes that there is a likelihood of
confusion between your trademark and an existing registered trademark. The
appearance, sound and meanings of the trademarks are considered as well as the
products or services. Registration may also be refused if your trademark is
deemed to be merely descriptive of your products or services. It is also common
for an Examining Attorney to require minor changes to an application or request
additional information. The Attorneys handle initial refusals, communications
and change requests without additional charge.
Publication
If no refusals or
additional requirements are identified, or if any refusals or other
requirements are satisfied, the Examining Attorney approves your trademark for
publication in the Official
Gazette. Publication in the Official
Gazette commences a
thirty-day Opposition Period. During the Opposition Period, members of the
public may file an Opposition Proceeding to oppose registration of your
trademark. They may also obtain extensions of the Opposition Period. Opposition
Proceedings are expensive, complex proceedings that are commenced in a
relatively small number of applications.
Final Processing
Use Application
Within approximately three to four months after your
trademark is published in the Official
Gazette, if no opposition was filed or any opposition is unsuccessful, then
the USPTO registers your trademark and issues a Certificate of Registration
with a Registration Date and Registration Number. We will send the original
Certificate of Registration to you.
Intent-To-Use
Application
Within approximately three to four months after your
trademark is published in the Official
Gazette, if no opposition was filed or any opposition is unsuccessful, then
the USPTO issues a Notice of Allowance. Within six months of the Notice of
Allowance, the Attorneys must file for you a Statement of Use (fees apply). The
Statement of Use states the first approximate date of first Commercial Use in
the United States and provides a specimen of the trademark. If you have not yet
commenced Commercial Use in the United States or cannot provide a specimen of
the trademark within six months of the Notice of Allowance, the Attorneys may
apply for a six-month Extension (which is routinely granted). Additional,
consecutive six-month Extension Requests may be filed up to a total of the
expiration of three years following the Statement of Use (fees apply).
Upon the acceptance of a Statement of Use, the USPTO
registers the trademark and issues a Certificate of Registration with a
Registration Date and Registration Number. We will send the original
Certificate of Registration to you.
Once your
trademark has been registered or your application has been finally refused, our
affiliated Attorneys are no longer the Attorneys of Record and your contact
information (as listed in the application) will be the contact information for
future correspondence by the USPTO or third parties concerning the trademark.
After Your Trademark is Registered
Registration owner files declaration:
Between
the beginning and end of the 6-year period after the registration date, the
registration owner must file a Declaration of Continued Use (fees apply).
Failure to do so will result in the cancellation of the registration.
Registration owner files
Declaration/Renewal:
Within one year before
the end of every 10-year period after the registration date, the registration
owner must file a Declaration of Continued Use and Application for Renewal
(fees apply). Failure to do so will result in cancellation or expiration of your
registration.
Our affiliated
Attorneys are happy to assist you with these Post-Registration filings.