The Trademark Process

A trademark application can be electronically filed as one of two types: a) “Bona Fide Intent-To-Use” application; or a b) “In Use” application. The requisite “Use” is the legitimate sale or transportation of a good or the provision of a service in interstate commerce as part of a continuing program.

About three to seven months after filing, an application will be assigned to an Examining Attorney. The Examining Attorney will review the application to determine whether it complies with all applicable rules and statutes. An examination will include a search for conflicting marks, a review of the application, drawing, and any specimen, and a determination that your mark is distinctive (not generic or descriptive; capable of distinguishing your goods/services from those of others).

If the Examining Attorney decides that a mark should not be registered or that it can be registered if technical or procedural deficiencies are addressed, the Examining Attorney will issue an Office Action explaining any substantive reasons for refusal or any nonsubstantive deficiencies in the application. Responding to an Office Action generally entails the filing of an amendment 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.

However, if the Examining Attorney raises no rejections or objections to registration, or if any rejections or objections are overcome, the mark will be published in the Official Gazette for the purpose of opposition by any persons who believe they will be damaged by the registration of the mark. If no opposition is filed within thirty days or if the opposition is unsuccessful, the application enters the next stage of the registration process.

At times, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO, are required to obtain the trademark registration because of irreconcilable differences with an Examining Attorney, or if an opposition is filed with the TTAB against your mark. Under these circumstances, we at Booth Udall will advise you of the nature of the case and what steps need to be taken to successfully prosecute the appeal.

A Certificate of Registration will issue for applications based on use about twelve weeks after the date the mark was published. For intent-to-use applications, a Notice of Allowance will issue about twelve weeks after the date the mark was published. You then have six months from the date of the Notice of Allowance to submit a Statement of Use declaring that you have used the mark in commerce or request a six-month Extension of Time to file the Statement of Use.

After the mark has issued, rights in it can last indefinitely if you continue to use the mark on or in connection with the goods and/or services in the registration and you file 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 your company’s brand into the decades to come.