A federal trademark application can be electronically filed with the United States Patent and Trademark Office (USPTO) as one of two types: a) a “Bona Fide Intent-To-Use” application; or b) an “In-Use” application. To file as an In-Use application, the trademark needs to be 1) already applied to all of the goods and/or services listed in the application, 2) all of the goods and/or services listed in the application need to be available to the public before the application is filed, and 3) in being available to the public, all of the goods and/or services need to be part of a continuing program of sales and need to either have been legitimately sold to someone who is a resident of a state that is not the applicant’s home state, or transported across state lines (like when they are shipped from the manufacturer to the distributor or from the distributor to the retailer). If an application is initially filed as an Intent-To-Use application, the applicant will need to file a Statement of Use with proof that the trademark is In-Use at some point before the Trademark Office will grant the Trademark Registration.

How Long does it Take to Examine an Application?

About four to eight months after an application is filed, the application will be assigned to an Examining Attorney who reviews the application to determine whether it complies with all of the applicable Trademark Office rules and US Trademark laws. An examination will include a search for conflicting trademark applications and registrations, a review of the application, drawing, and any evidence of use submitted, and a determination that the trademark is distinctive (not generic or too descriptive; capable of distinguishing the applicant’s goods/services from those of competitors).

What does a Trademark Examining Attorney do?

If the Examining Attorney decides that a trademark should not be registered or that it can be registered, but only if technical or procedural deficiencies are addressed, the Examining Attorney will issue an Office Action explaining any substantive reasons for refusal or any nonsubstantive problems with the application. Responding to an Office Action generally requires the filing of an amendment, legal arguments, and/or supportive documents with the USPTO to overcome any substantive rejections or any nonsubstantive objections made by the Examining Attorney. Negotiations may include an interview with the examining attorney, or can just be done by written submissions to the Examining Attorney through the USPTO Trademark Office Action Response interface.

However, if the Examining Attorney raises no rejections or objections to registration, or if any rejections or objections are overcome, the trademark will be “Published For Opposition” in the Official Gazette for the purpose of opposition by anyone who believes they will be damaged by the registration of the trademark. If no opposition is filed within thirty days or if the opposition is unsuccessful, the application enters the next stage of the registration process; Registration.

Can I Appeal the Trademark Examiner’s Decision?

At times, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO, is required to obtain the trademark registration because of irreconcilable differences with an Examining Attorney, or if an opposition is filed with the TTAB against the applicant’s trademark.  This process is like a mini-trial in the Trademark Office to determine who’s trademark rights are the strongest for the specific facts and case law.

When is the Trademark Registered?

A Certificate of Registration will issue for applications based on use about twelve weeks after the date the trademark was published. For intent-to-use applications that do not have a Statement of Use filed before the trademark was published, a Notice of Allowance will issue about twelve weeks after the date the trademark was published. The applicant then has six months from the date of the Notice of Allowance to submit a Statement of Use declaring that the trademark meets the In-Use requirements.  If at six months from the Notice of Allowance the trademark is still not In-Use, an extension of time can be requested for an additional six months of time to file the Statement of Use.  Up to five, six month extensions of time can be requested if needed provided ongoing efforts are being made to start using the trademark for the goods and/or services listed in the application.  Once the trademark is Federally Registered, the owner can use the ® symbol on the goods and/or services listed in the registration.

Trademark Rights Can Last Forever

After the trademark has Registered, rights in the trademark can last indefinitely if the owner continues to use the trademark on or in connection with the goods and/or services in the registration, and files the required Affidavits of Continued Use between the 5th and 6th anniversaries of the registration and Applications for Renewal on a date that falls on or between the 9th and 10th anniversaries of the registration, and for each successive ten-year period thereafter. In this way, Federally Registered trademarks serve to protect and build a company’s brand into the decades to come.

Hire an Attorney to Help with the Trademark Application Process

The Trademark Application Process is not intuitive and requires experience with trademarks and the USPTO to do it correctly.  Without an understanding of trademark law, business and trademark rights, an applicant can protect the trademark incorrectly, for the wrong goods and/or services, can cause their trademark registration to be invalid (without knowing about it until someone sues) and can be filed narrower than was possible if a qualified Trademark Attorney was helping with the process. The help of a qualified Trademark Attorney to assist in preparing and filing the application, and to help with any negotiations with the Trademark Examining Attorney is strongly recommended.  There are some cases where a trademark is simple and there are no conflicting marks where a Federal Trademark Application can pass through the USPTO without issue even without a Trademark Attorney’s help.  However, most often, a deeper understanding of Trademark Law is required to ensure that the specifics of the Trademark application are done correctly to ensure that the trademark protection is as broad as it possibly can be for a particular business.  A Company’s trademarks and brand identity are critical to its long term business success.  Trademark protection is not a place to cut corners on to save a few dollars.

Kenneth C. Booth

Ken Booth is a Registered Patent Attorney and IP Coach® specializing in patent and trademark services. Ken provides boutique-quality guidance and representation at state, federal and international levels during every phase in the life of patent, trademark, copyright, trade secret and licensing assets.
Kenneth C. Booth

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