Here is a comprehensive breakdown of the 3 phases of the trademark application process
- Prosecution -
Once a trademark application is submitted to the USPTO, an examining attorney will be assigned to review the application within 3-4 months following the submission of the application. Once assigned, your examining attorney will review your application to make sure that you have followed proper procedure for the application, and to assess if your trademark qualifies for federal trademark protection.
If your assigned examining attorney finds any legal issues with your trademark or your application, they will send you an office action letter requiring you to address the legal issues with the application. Your application will not progress until you address all legal issues presented by your examining attorney.
If you cannot overcome the legal issues presented in your office action, you must appeal the decision. If you are ultimately unsuccessful in responding to your office action or appealing the decision of your examining attorney, your trademark application will become abandoned.
Minimum waiting period: 120 -180 days
- Publication -
After your examining attorney reviews the initial application, if no legal issues are found or you have addressed and remedied all legal issues presented by your examining attorney, then you will receive a notice of publication. Your trademark application will be published on the Trademark Official Gazette for a period of thirty (30) days.
During publication, third parties will have an opportunity to oppose your trademark and your trademark application. This is achieved by the third party submitted a Petition to Oppose to the USPTO. If this happens, you must defend your trademark and your application in a federal legal proceeding before the TTAB division of the USPTO that is similar to a federal lawsuit. If an opposition proceeding is initiated against you, you can expect significant delays in the registration of your trademark.
Minimum waiting period : 30 days
- Proof of Use- (Only applicable if you submitted a trademark application on a Section 1(b) basis for intent to use)
After the publication period ends you will receive a Notice of Allowance from the examining attorney. Once you receive your Notice of Allowance, you have six (6) months demonstrate to the USPTO that you are providing the goods and/or services that you listed in your application, in the actual marketplace in more than one state. This known as “Use in Commerce'“
To demonstrate use in commerce, you must submit a Statement of Use to the USPTO that is accompanied by a proper Specimen depicting your product or services as it would be encountered by your customers. You must submit a statement of use and it must be accepted and approved by the USPTO before you application progresses to the next phase. If you require more time beyond the initial six (6) months provided by the USPTO, the USPTO will grant several extensions if sufficient grounds for granting an extension can be provided.
Minimum Waiting Period: 0 - 180 Days
- Final Review -
After publication, provided that you have already demonstrated use in commerce to the USPTO, your application will undergo a final review where the Director will review your trademark application to ensure that your examining attorney did not overlook any legal issues.
If all legal issues have been remedied and all requirements for registration have been met, once the final review is complete, you will receive a Registration Certificate evidencing the registration of your trademark.
In rare cases, a Director will find legal issues that were overlooked and will send your application back to your examining attorney for further review.
Minimum Waiting Period: 30 days
There are many roads a trademark application can follow and many issues that can make the trademark application process difficult. We’ve been down this road many times and have learned a few tricks along the way. Let’s work together to register your trademark.