It’s pretty common for clients to ask me about the US trademark application process and what they should expect once their application is filed. Needless to say, the road to registration can be very bumpy at times, more so for applicants who didn’t perform a trademark search or failed to seek an opinion from an experienced trademark attorney regarding the eligibility of their trademark for registration. If you’re thinking about navigating the trademark application process yourself, it’s even more important that you fully understand the entire process to maximize your chances of successful registration with the United States Patent and Trademark Office (USPTO).
US Trademark Application Process – Initial Steps
USPTO Account
In order to begin the US trademark application process, you’ll need to log in to your USPTO account. If you don’t have one, then you’ll need to create one on the USPTO’s website. It’s completely free-of-charge and it shouldn’t take you very long to get up and running.
Preparation of USPTO Trademark Application Form
Once you’re logged in to your account, you’ll be able to start preparing the USPTO trademark application form through the Trademark Electronic Application System (TEAS). The USPTO actually provides six different trademark application forms from which to choose. Two of the forms are used to apply to register a trademark on the Principal Register (which is what the vast majority of people want to do). Whether you’ll select the TEAS Standard or TEAS Plus form will depend on whether you can meet all of the TEAS Plus requirements and pay a lower filing fee. However, there’s no legal difference whatsoever between the two forms. In other words, the legal rights you obtain by filing a trademark application, as well as the USPTO examination procedures, are exactly the same no matter which form you choose.
The other forms are used to apply to register a trademark on the Supplemental Register, or to apply to register certification marks, collective membership marks, and collective trademarks on the Principal Register. These forms are used far less frequently than the TEAS Standard and TEAS Plus forms, but it’s certainly possible that the nature of your mark will necessitate preparing one of these forms instead. Because these forms are not commonly used, this article will only address the US trademark application process as it relates to the filing of a TEAS Standard or TEAS Plus form.
Filing of USPTO Trademark Application Form
Once you’ve carefully prepared the application form, you must file it along with payment of the USPTO filing fee (which is usually done with a credit or debit card). Immediately after submission, you’ll receive a confirmation screen displaying your application Serial Number and an option to download your filing receipt. You’ll also receive a copy of the filing receipt via email.
Congratulations on completing the first step in the US trademark application process! But that’s just the beginning.
Review of US Trademark Application
Timeline for Review
After filing your trademark application, it will be about a 5-7 days before it’s available online for public viewing and access. You should use TSDR to check the status of your application and to periodically monitor its progress. As a result of the vast number of trademark applications filed every year, it will be at least 9-10 months before the USPTO assigns your application to an examining attorney. Until then, your trademark application just sits there waiting patiently for an examining attorney to review it.
Examination of Application
Once that day finally arrives, the examining attorney will examine your trademark application for both completeness and compliance with all of the USPTO’s rules and regulations. The examining attorney will then determine whether your trademark falls into any one of the numerous categories of trademarks that are legally prohibited from being federally registered (e.g. deceptive trademarks, merely descriptive trademarks, geographically descriptive trademarks, etc.). Finally, the examining attorney will conduct a thorough search of the USPTO records to determine whether there’s a likelihood of confusion between your trademark and another trademark in a pending application or existing registration owned by someone else.
Approval or Rejection?
At this point in the US trademark application process, one of three things will happen:
- If the examining attorney finds nothing that would bar registration of your trademark, then your trademark application will be approved for publication.
- If your trademark application contains errors or omissions, or if the examining attorney determines that your trademark is ineligible for registration, then you’ll receive a trademark office action explaining why your application can’t be approved for publication. In order to prevent your application from going abandoned, you must file a response by the deadline stated in the office action (or a Request for an Extension of Time to File a Response, if eligible). If you’re able to successfully overcome all of the issues raised in the office action, then the examining attorney will approve your application for publication. If you’re not able to, the examining attorney will instead issue a final office action, at which time you would have the option of filing a Request for Reconsideration with the examining attorney, or a trademark appeal with the Trademark Trial and Appeal Board (TTAB).
- The examining attorney issues a Letter of Suspension, which puts your trademark application on hold until the situation that occasioned the suspension is resolved and your application can be approved for publication.
Published for Opposition
Soon after your trademark application is approved for publication, it will be published for opposition. This is the point in the US trademark application process where anybody throughout the entire world can file a trademark opposition against your application if they believe they’ll be harmed by the registration of your trademark. If an opposition is filed with the TTAB within the 30-day publication period (or within the extended period of time granted by the TTAB in response to a requested extension of time to oppose), then your application will be put on hold until the opposition is dismissed. This could take weeks, months, or even years.
Certificate of Registration or Notice of Allowance?
Certificate of Registration
If nobody filed an opposition against your trademark application (or if the TTAB ultimately dismissed the opposition), and your trademark application is based on Section 1(a) (use in commerce) or Section 44(e) (U.S. application based on a foreign trademark registration), the USPTO will issue the Certificate of Registration. Hooray! US trademark application process completed!
Notice of Allowance
However, if your trademark application is based on Section 1(b) (intent to use), the USPTO will instead issue the Notice of Allowance. You have six months from the Notice of Allowance date to file the Statement of Use. If you can’t file the Statement of Use within those six months, you can obtain another six months by filing a Request for an Extension of Time. You can purchase up to five Extensions of Time (six months each) before you must file the Statement of Use.
The examining attorney will review the Statement of Use to determine whether it’s in full compliance with the rules. If so, the USPTO will issue the Certificate of Registration (hooray!). If not, then the examining attorney will send you an office action explaining why the Statement of Use can’t be accepted. In order to prevent your trademark application from going abandoned, you must file a response by the deadline stated in the office action. If you’re able to successfully address all of the issues raised in the office action, then the examining attorney will accept the Statement of Use and approve your application for registration. If not, the examining attorney will instead issue a final office action, at which time you would have the option of filing a Request for Reconsideration with the examining attorney, or a trademark appeal with the TTAB.
Contact Me for Help with the US Trademark Application Process
I’m experienced US trademark attorney Morris Turek. If you would like to consult with a trademark attorney about the US trademark application process, or want to explore the possibility of registering your particular trademark, please call me at (314) 749-4059 for your free consultation. Alternatively, don’t hesitate to reach out to me through my contact form (below) or via email at morris@yourtrademarkattorney.com. I look forward to hearing from you soon.