What Happens After a Federal Trademark Application is Filed?
You did the hard work of creating a product or service. You developed a brand after extensive research for your target market and you worked with trademark attorney to help you determine if your trademark is registrable. Then you filed your trademark application with all of the necessary attachments on USPTO.gov. What happens now?
Initial Processing of the Application a USPTO Clerk
First the United States Patent and Trademark Office (USPTO) will assign your application a number upon receipt. The trademark applicant will be responsible for monitoring the progress of their application. This is extremely important to remember because certain deadlines may be applicable. The best way to never miss a deadline is to monitor the application status via USPTO’s using the Trademark Status and Document Retrieval (TSDR) system. The USPTO recommends checking your application status under the “drafts and docket” section of the Trademark Center every three to four months.
Next a USPTO clerk will review the materials you submitted. The clerks are responsible for verifying that you submitted all the requisite documents such as logo drawings and specimen of use, and paid the necessary filing fees. If your application file is complete, then the USPTO will classify your application based on the which of the 45 appropriate categories in the classification system applies to your good or services. You will then be sent a receipt acknowledging that the USPTO received your filing. Please make sure you keep your address and email up to date so you can receive any updates from the USPTO.
The entire application process could take up to three months. After that you will have to wait for your application to be assigned to a USPTO examining attorney. You might not hear anything from the USPTO for up to eight months. If you would like specific waiting times for your application you can check the USPTO website and check what batch of applications they are working on. In general, the entire application process for most trademark applications takes 13–18 months.
What is the role of the assigned USPTO examining attorney?
The USPTO examining attorney assigned to your trademark application will review your application and decide if it is complete and consistent. First, they will double check the filing process such as check to see if the application met the minimum filing requirements and, if the application has been assigned a serial number. Next the USPTO attorney will determine if your application complies with all applicable rules and statutes, and included all the required fees. Then the USPTO attorney will determine if your trademark application complies with the Lanham Act for the purpose of determining registrability in the United States. Determining registrability involves a lengthy search by the examining attorney of the USPTO database for conflicting trademarks. Finally, they will review your drawing and any specimens submitted.
What Happens If There Are Issues or Deficits with My Application?
If an examining lawyer finds problems relating to the form of the application you will receive an Office Action from the USPTO. For example, there may be a problem with how precisely you have described the mark or whether your drawings are adequate. In this case, you will need to respond to the Office Action following its instructions. You must do so within the designated timeframe specificized in the Office Action.
If the USPTO examining attorney determines that your application contains a mark utilizing a common or generic words, you will not be allowed to claim it as your own. Again, you will be notified via a letter (Office Action). If the USPTO examining attorney determines the application has problems (such as typo graphical or other errors) then you may either receive a direct communication like a call or email or you may receive an Office Action). You will be allowed an opportunity to make corrections. However, you must make those correction within the deadline provided. Failure to respond will result in your application's rejection based on abandonment. If for some reason you want to respond to an office attorney but you will not be able to do so before the deadline, you have the ability to request a three-month extension for a fee.
What if the USPTO examiner rejects my application?
If the examiner rejects your application for a substantive reason, it is probably best for you to consult with a trademark attorney. Substantive reasons for rejection could be your requested trademark is:
Confusingly similar to another trademark,
Merely descriptive in that it immediately conveys a quality, purpose, function, feature, characteristic, ingredient, or use of goods or services,
Primarily geographically descriptive such as if the mark is a generally known geographic location, makes consumers believe the goods or services originated from a geographic location, or if the goods and services actually did originate from a geographic location.
Primarily geographically deceptively misdescriptive
A last name or surname, or
Ornamental in nature meaning the mark does not distinguish the goods and instead is merely a decorative feature of the goods.
If the USPTO rules to reject your application a trademark attorney can help you decide whether to appeal this ruling and where you should present your appeal. You have two avenues for appeal: the Trademark Trial and Appeal Board (TTAB) or you can file an action in federal court.
What if Your Application Goes Through Without Deficits or Rejections?
If your application is sufficient, the USPTO's Official Gazette will publish a Notice of Opposition. Then you will have to wait to see whether anybody objects to your application. If nobody objects within the allowed time and you've already used the mark, the USPTO will register the mark. If you did not start using the mark, the application will be registered once you establish its use. This is done through a Statement of Use form.
If you need any assistance with filing a trademark application or any other question we are here to help.