Trademarks: After You Apply

Trademarks: After You Apply

by Jane Haskins, Esq., April 2017

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Filing a trademark application is just the first step toward trademark registration. Over the next several months, your application will move through a review and publication process. During that time, it's important to monitor the application and respond promptly to notifications from the United States Patent and Trademark Office (USPTO).

Filing a trademark application doesn't guarantee registration. Your mark will be reviewed by the USPTO and may face legal opposition. Increase your chance of success by monitoring your application and getting legal help.

After You File: The Next Step

The USPTO will confirm that your application meets minimum filing requirements. Then it will assign a serial number and forward your application to a trademark examining attorney. The examining attorney will review your application, your drawing, and your specimen (if you submitted one), and will conduct a trademark search for conflicting marks. The examining attorney will also confirm that you paid all required fees.

Office Actions

If the examining attorney decides that your application cannot be approved, you will receive a letter called an Office action. It will explain the legal reasons for refusing your registration and the problems with your application. Some issues are simple to resolve, but others may be impossible to overcome.

Typically, you must respond online to an Office action within six months of the date of the letter, or your application will be declared abandoned. Your response must cover all points raised in the letter. A trademark lawyer can offer legal advice or prepare your response, or you can contact the examining attorney for clarification.

If your response doesn't resolve all the issues in the Office action, the examining attorney will issue a final Office action. Generally, you can only respond by complying with the requirements stated in the Office action or filing an appeal with the Trademark Trial and Appeals Board (TTAB)—otherwise your application will be denied or “refused."

Publication

If there are no remaining issues, your mark will be approved for publication in the Official Gazette, a weekly online USPTO publication that notifies the public that your mark is about to be registered. Anyone who thinks they would be harmed by your registration has 30 days to file an objection with the TTAB. Because objections involve legal and technical issues, it's wise to consult a trademark lawyer for advice if someone objects to your trademark.

If there are no objections, or if they have all been resolved, the next step is either registration or a Notice of Allowance.

“Intent to use" Applications

If you filed your trademark based on an “intent to use" the mark in commerce, you will receive a Notice of Allowance, which means your trademark has made it through the opposition period. For your registration to become final, you must begin using your mark, file a Statement of Use, and submit a specimen showing how your mark is used.

You have six months from the date of your Notice of Allowance to file a Statement of Use or request a six-month extension. You can request up to five extensions, but you must do it before the deadline or your application will be declared abandoned. Your Statement of Use and specimen will be reviewed by an examining attorney, and you will receive an Office action if there are additional legal issues.

Abandonment, Refusal or Registration

There are three possible outcomes for a trademark application.

1. Abandonment. If you miss a deadline, your application is declared abandoned and will no longer be considered for registration. You can still use your trademark, but unless you act quickly, you will have to start over and pay all fees again to register it.

2. Refusal. If there are unresolved legal problems with your application, it may be denied, or refused. A lawyer can advise you on next steps, including appeals and whether you should continue using your mark.

3. Registration. The USPTO will send you a certificate of registration. You can now begin using the registered trademark symbol, ®.

Monitoring Your Application

It's important to regularly monitor your application status through the USPTO's website, and to keep your email and mailing addresses up to date. This helps you avoid missing deadlines and having your application declared abandoned.

Reviving an Abandoned Application

If you unintentionally missed a deadline and received a Notice of Abandonment, that means your application is no longer active. You can put your application back on track by filing a Petition to Revive within two months of the date on the notice.