AFTER MY APPLICATION IS SUBMITTED, WHAT HAPPENS NEXT?

After we submit your application, it usually takes between 9 and 15 months for the trademark process to be complete.  After the USPTO determines that you have met the minimum filing requirements (meaning that we have correctly and properly filed your application), an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees.

A complete review includes a search for conflicting marks, and an examination of the written application, the drawing (if any), and any specimen (for in-use applications, as opposed to “intent-to-use” applications.

If the examining attorney decides that a mark should not be registered for one of many potential reasons for refusal, the examining attorney will issue a letter (an “Office Action”) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office Action, the applicant's response to the Office Action must be received in the Office within six months of the mailing date of the Office Action, or the application will be declared abandoned.

Trademark filing services cannot provide assistance with responses to Office Actions, because they are filing services and not attorneys.  Our firm can help you respond to an Office Action to address any issues raised by the USPTO and keep the application process moving forward, to avoid abandonment.  All you have to do, once we notify you that an Office Action has issued for your mark, is confirm that you want us to handle the response.  The terms and conditions of our engagement for such work was accepted by you when you submitted the intake form, so we can move forward without another representation agreement—it would already be covered.  We bill all such work by the hour, and as your engagement agreement provides, we will bill you in arrears at the discounted rate of $275 per hour (discounted from $395), since you used our firm to file the original application.

If the response required for the Action is technical, our time will be minimal.  If the response is a substantive refusal based on likelihood of confusion with another mark, or stating that the mark is merely descriptive, for example, we must prepare and submit a legal brief with our response.  This normally takes a couple of hours, at least.  If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections in the response to the Office Action, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a Notice of Publication to the applicant stating the date of publication, and we will notify you of this occurrence. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on an in-use application, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). A Notice of Allowance will issue for intent-to-use applications.

If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.

If the mark is published based upon the applicant's bona fide intent-to-use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a Notice Of Allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the Notice of Allowance to either:  (1) Use the mark in commerce and submit a Statement of Use; or   (2) Request a six-month Extension of Time to File a Statement of Use.  We can assist you with filing the Statement of Use and providing the specimen, or with filing an extension.  The fees for these filings are $100 and $150 per class, respectively, and our fees range from $150-300, depending on the application and the work involved.  Once you do submit the specimen for the intent-to-use application, showing use in interstate commerce (the standard requirement for a Federal trademark to issue), you have a priority ownership date for that mark retroactively back to the date the application was originally filed.

I hope the foregoing addresses all of your questions about the next steps, and what you can expect throughout the trademark process.  If you have any further questions, I would encourage you to visit www.uspto.gov and read the USPTO’s FAQs.

Once again, thank you for your business, and be assured that we will be in touch as soon as we receive any kind of notification from the USPTO. 

If you have any other corporate, intellectual property or other legal needs, please keep us in mind, as we serve clients all over the country.  You can find out more about our firm at http://www.dglegal.com/
What is a Trademark?