The Trademark Application Process

FILING THE APPLICATION

The road to obtaining a trademark registration begins with the filing of an application. Trademark applications for U.S. residents and companies can be based either on:

1. actual use in interstate commerce or use in foreign commerce between the United States and some other country; or

2. a “bona fide” or good faith intent to use the mark in either interstate or foreign commerce.

The federal application cannot be based solely on commerce in one state. However, the standard for determining whether someone is engaged in interstate commerce is very broad and it is very difficult for most businesses today to not be involved in interstate commerce.

The intent-to-use basis is for applicants who are planning on using the mark in connection with their business in the near future (i.e., within the next three or four years). The advantage of this basis is that it allows you to gain priority rights in a mark without actually using it first. While you will be required to show use of the mark before a registration will issue from the USPTO, your priority rights will relate back to the day you filed your trademark application rather than the day you actually start using the mark.

Trademark applications can also be based on a combination of use and intent-to-use for different goods and services. For example, a restaurant which has been in business for several years and which now plans to introduce a frozen food line for sale in grocery stores, could base its application on use for the restaurant services and intent-to-use for the frozen food products. However, the PTO will not issue a registration until the frozen food products are introduced into the market. Therefore, if the restaurant wanted a federal registration for its restaurant services without waiting to develop and sell the frozen food line, it would be more advantageous to file two separate applications.

Finally, if the applicant is based outside of the United States, the applicant can, in addition to the bases discussed above, base its U.S. application on either a registration issued in its home country or an application filed in its home country. If the U.S. application is filed within six months of the filing of the foreign application, the applicant can obtain the same priority filing date of the application filed in its home country.

EXAMINATION OF THE APPLICATION

After the application is filed, a Trademark Examining Attorney will examine the application. The current backlog in new case filings with the PTO is not as bad as it was in recent years. Nevertheless, it usually takes 120-150 days after filing the application to be examined.

The Trademark Examiner will conduct a search of active federal applications and registrations and if there is a prior application or registration which is confusingly similar to your mark, your application will be refused.

However, likelihood of confusion is but one ground for refusal of a mark. A more detailed description of the other substantive grounds for refusal can be found under the trademark faqs. Additionally, there are numerous minor requirements that must be complied with such as specifically identifying the nature of the goods and services; disclaiming the exclusive right to use the unregisterable components of a composite mark, i.e., where the mark contains a logo design and descriptive or generic wording, then the wording must be disclaimed before it can be registered. Other requirements include payment of all required filing fees, translating foreign wording in the mark into English, and providing a written description of non-obvious features of the mark such as color, sounds or movements.

If the mark is based on use in commerce, specimens showing how the mark is used must be filed with the application. For service businesses acceptable specimens are advertisements. For tangible goods, acceptable specimens are tags, labels, packaging or photographs of the mark as used on or in connection with the goods. Advertisements are generally not acceptable for tangible goods but there are some narrow exceptions to the rule.

ISSUANCE OF OFFICE ACTIONS

If there are problems with the application the Examining Attorney will issue a written letter, formally known as an “Office Action,” explaining what the nature of the problems are. Some minor problems can be corrected in a telephone conference with the Examiner. If an Office Action is issued, the applicant has six months to either correct the problems, if possible, or submit written arguments challenging the Examiner’s determination. if no response is filed within six months of the office action, the application will be automatically abandoned.

If a response is timely filed and it corrects the problems cited in the Office Action, the Examining Attorney will approve the application for publication in the USPTO’s Official Gazette. If the problems continue to exist or if the Examiner is not convinced by the response to withdraw a substantive refusal, the Examiner will issue a final Office Action. An applicant has six months from the issuance of the final Office Action to either correct the problems cited or appeal to the Trademark Trial and Appeal Board and argue that the Examiner is acting in error. Again, if no response or appeal is filed, the application will automatically abandon. fees will not be refunded in connection with abandoned applications.

THE PUBLICATION PHASE

Usually about two months after a mark is approved for publication, it will appear in the USPTO’s Official Gazette. The publication of the mark in the Official Gazette is to give third parties the right to object to the registration of a mark before it registers.

Third parties who believe they will be damaged or harmed by the registration of your mark must file either a notice of opposition or a request for an extension of time to oppose a mark within 30 days of the publication of your mark in the Official Gazette.  An opposition is essentially like a lawsuit, however, it is conducted mainly through written documents, discovery and depositions and is decided by a three-member panel of the Trademark Trial and Appeal Board. It is not necessary that the Opposer have or own a federal trademark registration in order to have standing to oppose. Oppositions can be based on any number of grounds, however, the Opposer must show that it will suffer harm in some way through the registration of your mark.

If a mark is not opposed by a third party within the allotted time, or any granted extension request, then the mark will be registered if the application was based on actual use in commerce.

If the mark was based on intent-to-use, a Notice of Allowance will be issued. This Notice states that you will be entitled to registration upon filing a Statement of Use, along with specimens showing use of the mark, within six months of the issuance of the Notice of Allowance. If you will not start use by the end of the six-month period, you must file a request for an extension of time to file a Statement of Use. An extension, if granted, will be for an additional six months. A total of five extensions may be requested. If use does not commence within three years of the issuance of the Notice of Allowance, the application, and all fees and expenses invested to that point, will be lost.

POST REGISTRATION

Once the registration issues, it is important to note that it will not last forever unless the trademark registrant takes steps to maintain it.

Between the fifth and sixth-year anniversary of the registration date, the owner or the registration must file a Declaration of Continued Use stating that it is still using the mark and specimens showing how the mark is being used at that time must also be submitted. There is a six-month grace period after the six-year anniversary of the registration in order to file a late declaration, however, there is a substantial penalty fee for the late filing.  If the declaration is not filed by the end of the grace period, the registration will be automatically cancelled. It is not possible to revive a cancelled registration and the only option a trademark owner has is to file a new application.

Assuming the initial Declaration of Continued Use is timely filed, a renewal application for the registration, along with another Declaration of Continued Use and accompanying specimens must be filed within the ninth and tenth-year anniversary of the registration. Again, there is a six-month late filing grace period with payment of an additional late fee. Trademark registrations may be renewed every ten years thereafter for as long as the owner uses the mark in connection with its goods or services.

It is also very important to understand that the USPTO will never send you a reminder notice for any post registration filing. It is solely up to the trademark registrant to ensure that the required documents are timely filed or the registrations will be automatically cancelled.