Understanding the TRADEMARK APPLICATION PROCESS
Step 1: You fill out a short form that will assist the Team with filing the application for your trademark.
If your trademark is already in use in commerce (which generally means that you are already using the trademark on goods or services that you are offering for sale to the public) then the Team will file a "1.a" or "In-Use" application for goods and services already in use in commerce.
If you are intending, but have not yet used your trademark on goods or services that you are offering for sale to the public, then the Team will file a "1.b" or "Intent-To-Use" application. This type of application requires you to file a Statement Of Use once you start offering your goods or services for sale to the public. You must pay the United States Patent And Trademark Office (the "USPTO") an additional $100.00 filing fee with your Statement Of Use.
The Team will usually file your application with the USPTO within 24 hours of receipt of your completed form and payment of all associated fees. (See our "Services & Prices" page for a listing of all fees and filing costs.)
Step 2: The USPTO assigns an application serial number to your application and forwards it to an examining attorney at the USPTO. This may take 1-2 months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes for registration. Often times, the examining attorney initially issues a letter, called an Office Action, stating that a mark can not be registered because of a technical or a substantive reason. A technical reason or minor substantive reason can generally be fixed with your cooperation, and the Team will work with you at no additional charge to correct such technical or minor substantive problems. A major or substantial substantive reason for refusing a registration usually means that there is a considerable legal impediment to registering your trademark (i.e. another person has already registered a mark that is "confusingly" similar to your mark). A major or substantial substantive reason for refusing a registration requires legal research, analysis and written and/or oral debate with the USPTO. This requires the Team to acquire the legal services of an attorney and charge an additional fee. If a major or substantial substantive Office Action is issued, an attorney will contact you and thoroughly review with you your options and costs prior to proceeding. We have a six month period in which to respond to a technical or substantive denial of your application.
(Note: A search of your proposed trademark will often, but not always, prevent the examining attorney from denying your registration for a major or substantial substantive reason. You can review the "Services & Prices" page for information and costs related to conducting a search.)
Step 3: Once you overcome all of the examining attorney's objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. After the mark is published in the Official Gazette, an outside party has 30 days in which it may file an objection (this is called an "opposition") to the registration of your proposed trademark. While this rarely happens, if it does, it sets in motion a complicated process (similar to a federal court action), which requires substantial legal research, analysis and legal filings. In this situation, the Team must acquire the legal services of an attorney and charge an additional fee, or you can abandon the trademark application. The Team will arrange for an attorney to contact you and thoroughly review with you your options and costs prior to proceeding.
Step 4: If no outside party opposes the registration of your trademark, the application enters the next stage of the registration process:
If we filed a "1.a" or In-Use application for your trademark, your trademark will now register and a certificate will be sent to the Team office (and then forwarded to you).
If we filed a "1.b" application or Intent-To-Use application, the USPTO will issue a notice of allowance about twelve weeks after the date the mark was published. You then have six months from the date of the notice of allowance to either: (1) use the mark in commerce and submit your Statement Of Use; or (2) request a six month extension of time to file a Statement Of Use (a total of five extensions may be filed; however, each extension requires payment to the USPTO of an additional $150.00 fee). Once a Statement Of Use is filed, the examining attorney reviews it to confirm that it satisfies all of the necessary requirements, and then the USPTO will register the trademark and a certificate will be sent to the Team office (and then forwarded to you). This process takes approximately two months.
Step 5: After the mark registers, you must timely file specific maintenance documents to keep the registration active or "live". The Team will provide you with these instructions with your registration certificate. IMPORTANT NOTE: Neither the USPTO nor thetrademarkteam.net or any of its representatives provides you with any further notice to file this information -- so be sure to establish a calendaring system for these deadlines.
Generally, it takes between 8-16 months to fully complete the application process; however, the "effective" registration date is the date the application was filed.