You’ve Applied for Trademark Registration, What Next?

Applying for and obtaining a trademark registration can be an exciting prospect. Unfortunately, the process takes time—at least 6 months, and oftentimes up to a year.

Here’s a breakdown of the registration process:

1. 1. Application Review. Approximately 3 to 4 months after filing, the PTO will review the application to ensure that there are no grounds to refuse registration. If there are no grounds for refusal, the PTO will publish the mark for opposition (go to Step 2).
      • Office Action. If a ground for refusal exists, the PTO will issue an office action refusing registration. You have 6 months to respond and argue that the ground is insufficient or has been overcome. The PTO will review the response within 1-2 months after it is filed. If you overcome the ground for refusal, the PTO will publish the mark for opposition (go to Step 2).
      • Final Office Action. If you fail to overcome the ground for refusal, the PTO will issue another office action making the refusal final. You have 6 months to either request reconsideration of the final refusal, or appeal. The PTO will review a request for reconsideration between 1 and 2 months after it is filed. If you overcome the ground for refusal, the PTO will publish the mark for opposition (go to Step 2).
      • Appeal. If you fail to overcome the ground for refusal, or if you choose to directly appeal the final refusal, the application is sent to the Trademark Trial and Appeal Board (TTAB), which conducts a quasi-judicial proceeding to determine whether the mark was properly refused. TTAB appeals can be expensive and are often time-consuming (over a year).
2. Publication in the Official Gazette. Approximately 1 month after the PTO reviews an application and finds that there are no grounds for refusal, the PTO will publish the mark in the Official Gazette. Publication provides notice to others that you intend to register the mark. If a 3rd party feels that it will be damaged by registration of the mark, it can oppose the mark in a quasi-judicial opposition proceeding before the TTAB. Like appeals, TTAB opposition proceedings can be both expensive and time-consuming.
3. Registration or Notice of Allowance Issues. Approximately 2 months after a mark is published without any 3rd party opposition, the mark will either register (if the application was based on actual use of the mark) or be given a notice of allowance (if the application is based on an intent to use the mark). You have 6 months from the notice of allowance date to file a statement of use or request an extension of time to file a statement of use. You may file for up to 5 extensions of time to show use (each extending the time to show use another 6 months). A mark given a notice of allowance will only register after a proper statement of use is filed, showing use of the mark in commerce.

Be sure to keep your trademark attorney abreast of any updates in your development and use of any applied-for trademarks, so that they can make the registration process as quick and seamless as possible.

For more information about this topic, contact Frank Knizner.