What Happens After You
File Your Trademark Application

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Trademark Basics:  


• Click Here to view the government's Trademark Basics" page.


trademark-approval-how-long-does-it-take.html Trademark Approval Timeline


• CLICK HERE for an explaination of how long it takes for a trademark to be registered after the initial application
trademark-approval-how-long-does-it-take.html

• Use the following link to track the progress of your applicaition:  http://tsdr.uspto.gov/.  (you will need the application's serial number found in the filing receipt that was emailed to you)


• CLICK HERE for information on the current wait times


Deceptive Offers, Notices and Phone Calls


• After the filing of a trademark application the applicant's name and address becomes part of the public record and the applicant may receive misleading or fraudulent offers or notices from private companies (perhaps even phone calls)  The applicant should not be fooled.  The applicant does not need to respond.


• All official correspondence from the government regarding the a trademark will be sent by email from a "USPTO.gov" email address.  Click here for more information from the government's website.


USPTO Examining Attorney


• How long will it take to assign an examining attorney?:  After an application has been filed it will be assigned to an "examining attorney" to determine whether federal law permits the proposed registration.  It takes several months after an application has been filed for USPTO to assign an examining attorney.


• The examining attorney will examine the application to ensure that it satisfies all of the legal requirements.  There are many factors that affect how long it takes to register a trademark.  In fact, there's no guarantee your trademark will ever register, as it may be refused for various legal reasons.  Usually, the process takes 12 to 18 months.


• "Office Action" letters:  If the examining attorney refuses registration or requires more information he or she will notify the you by means of a written communication called an "Office Action".  A response to an Office Action must be submitted within 3 or 6 months of the date of issuance (read the Office Action carefully to determine the exact response deadline).


• The clinic does not represent its clients during the approval process after an application has been submitted. HOWEVER, if an Office Action is issued the client can contact the Clinic and the Clinic may assist the client in submitting the required response.


Approval of Your Application


• The registration approval process usually takes a few months but may take up to a year or even longer if the application is initially rejected and the submission of additional information is required.


• For applications filed on a "Use in Commerce" basis:


• PUBLICATION:  If the examining attorney raises no objections to registration, or if you overcome 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 you a Notice of Publication stating the date of publication.


• After the trademark has been published in the "Official Gazette," any party who believes it may be damaged by your registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.  IN THE VAST MAJORITY OF CASES NO OPPOSITION IS FILED.  An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.


• If no opposition is filed the registration will be finalized about three to four months following the notice of publication.


• For applications filed on an "Intent to Use" basis:
  
  
  • If you filed an "Intent to Use" application and if all goes well a "Notice of Allowance" (NOA) will be issued in about 4 months.  Your application will then be published in the "Official Gazette" (see the section above entitled "Publication"). Then you, by the deadline stated in the NOA, must file a "Statement of Use".  Acceptance of your Statement of Use is typically the last step before final approval.  CLICK HERE for more information on "Intent to Use" type filings. 


Periodic Renewals Required


• A trademark registration must periodically be renewed.  This is done by periodically filing on-line every few years a "Declaration of Continued Use".  Following the initial registration the deadlines for the periodic renewals are as follows:


• Between the 5th and 6th year
• Between the 9th and 10th year
• Between the 19th and 20th year (and then similarly every 10th year thereafter)


• For instructions on how to do this read "Keeping your Trademark Registration Alive" )


• USPTO will email reminders to you before the due date.  Their emails will contain a link to the relevant form that needs to be filed.  If you change your email address you must electronically submit a change of address form (CLICK HERE for the USPTO forms directory)


• When filing the Declaration, in addition to paying a filing fee ($325 per class) and providing a sworn statement that the trademark is still in use in commerce, there must also be be filed one or more specimens (digital images) showing actual continued use of the trademark.


Trademark Rejections and Appeals Procedure


• The USPTO examining attorney may reject an application by delivering a non-final "Office Action" letter by email.  The letter will state the reasons for the rejection and will give the applicant 3 or 6 months to take the corrective action specified in the letter (read the Office Action carefully to determine the exact response deadline).  If the applicant's response is not considered adequate the USPTO examining attorney will eventually send another Office Action letter (either "non-final" or "final") informing the applicant of USPTO's decision.  If it was labeled "final" further appeal must be submitted to the Appeal to the Trademark Trial and Appeal Board headquartered in a suburb of Washington DC


• CLICK HERE for a good article that provides a detailed and easy to understand description of the appeal process.


Design Search Codes


• After an application to register a trademark that is a graphic image USPTO typically will assign one or more "Design Search Codes" These are identifying numbers assigned to an application.  USPTO will typcially send to the applicant a notice telling the applicant which Codes they intend to use to search for previously registered trademarks that might be similar.  For example, all applications featuring images of balls will be assigned a specific code.  The Notice that they sent simply asks you if the applicant wants to add or delete a design search code.  In most cases no action is needed on the part of the applicant.&nspb; Instructions are given in the Notice as to how take advantage of the option of add or delete particular codes.


What if Someone Infringes on your Trademark


• The FIU Small Business Legal Clinic does not represent clients in litigation and does not assist clients in making demands that might result in litigation.  For that reason the Clinic does not provide legal assistance in enforcing trademark rights after a trademark has been registered.


• CLICK HERE for information on what to do if someone infringes on your trademark


• If someone is using a mark similar to yours (but not exactly the same) you can stop them on a theory of "consumer confusion".  CLICK HERE for a good article on this topic