28 Jun IP Basics: Overview of the US Trademark Application Process. **Attorney Advertising**
If you wish to file for a trademark in the United States, there is a fairly uniform process that must be followed to submit your claim and ultimately work towards approval of your desired trademark. The following blog post offers a basic overview of the process.
Step 1: Submit Your Application to the USPTO
In the US, trademark applications are handled by the United States Patent and Trademark Office (USPTO). These days, most applications are handled electronically. If you are working with an intellectual property lawyer, he or she will likely use the electronic filing system for most aspects of the trademark application process.
Step 2: Wait for an Examining Attorney to Review Your Application
After your trademark application is successfully submitted to the USPTO, the next step is to wait for an examining attorney to review your file. This process normally takes 3-4 months, but during the COVID-19 pandemic, we’ve seen delays as long as six months to have a trademark application reviewed.
Step 3: Address Any Office Actions Issued by The Examining Attorney
Once the application is reviewed, the examining attorney will either approve your trademark or they will issue an office action, which is a letter that explains their rejection of the mark. Some common reasons that an examining attorney may issue an office action include that the mark is confusingly similar to something already filed, it fails to function as a trademark, the mark is too descriptive, the mark is merely ornamental (just for decoration), etc. You have up to six months to respond to claims in the office action. If you don’t respond, your application is considered “abandoned.”
Step 4: Get Through the Publication Process
If your mark is immediately approved, or if you are successful in overcoming an office action, your mark then goes on to publication. This gives any third party thirty (30) days to come forward to oppose your registration or file an extension of time to file the opposition. This generally occurs if another company or brand believes your mark is too close to one that’s already registered, or your trademark is something that’s considered common use in your industry and the third party does not believe you should have exclusive protection over it.
Step 5: Understand the Type of Approval You Now Have
After this publication period concludes, you would receive your registration if you filed the application based on use of the mark in commerce and provided a specimen of such use at the time of the filing. If you filed based on “intent to use”, after publication you will receive a Notice of Allowance giving you an initial six months within which to file a statement of how you are using the mark, or you can file an extension. Up to five (5) extensions can be filed so you essentially have three years within which to prove you are using the mark.
Step 6: Learn How to Maintain Your Trademark
Of course, final approval is not the last interaction a trademark holder will have with the USPTO. There are steps that must be taken after registration to renew the mark and pay any necessary fees. Ideally, your attorney will walk you through what to expect and keep you abreast of required time periods to take action on your trademark so that you do not lose it. If you are not working with an attorney, you’ll want to get familiar with the process for renewal and create alerts and reminders so that you do miss any critical dates.
Need Help with Any of These Steps?
If you have questions about the general process to file for a trademark here in the United States or you need help putting your application together, we are here to assist you. Simply contact The Law Office of Jason H. Rosenblum, PLLC at (888) 666-0062 to schedule a complimentary consultation with the mention of this blog post.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.