TRADEMARK LEGAL SERVICES

APPLICATION FOR REGISTRATION

Federal registration of your trademark provides you with a powerful tool to protect your brand. A federal registration gives you a nationwide legal presumption of use for your mark in connection with your goods or services.  Registration also gives you additional ways to bring legal action against those who may infringe.  We draft and file your application with the U.S. Patent and Trademark Office to maximize your brand's protection and minimize obstacles that may prevent registration of your mark. 

How does the application process work?

The trademark registration process involves a serious of steps.

STEP 1.     Select your trademark.  We recommend that you complete a thorough SEARCH prior to selecting the mark you intend to use, as it is important to minimize the chance of conflict with another's trademark rights as well as provide us with as much available information to assist in drafting an APPLICATION FOR REGISTRATION.  For more details on trademark search, link here.

STEP 2.     Draft and submit an APPLICATION FOR REGISTRATION.  We prepare and draft the application for filing with the U.S. Patent and Trademark Office.  The application itself includes who owns the trademark, a description of the trademark and a description of the goods and services. 

STEP 3.     Review by U.S. Patent and Trademark Office Examiner.  Your application is submitted to an Examiner for review.  Typically, it takes about three months for the assignment and several additional months before the Examiner takes action - either issuing an OFFICE ACTION (Step 4 below) or a Notice of Publication (Step 5 below).

STEP 4.     OFFICE ACTION and Response.  In the event that the Examiner identifies any issues with the action, he or she may issue an OFFICE ACTION in the form of letter, explaining the Examiner's objections. The Examiner may request simple technical amendments or may contain an outright refusal to register your trademark.  In the event of an OFFICE ACTION, you must file a response or the application will be considered "abandoned" and your trademark will be registered.  At this stage, either the Examiner's objections are overcome and the mark is published (step 5 below) or a final refusal may issue.  It is possible to appeal a final refusal by appeal to the Trademark Trial and Appeal Board (TTAB).

STEP 5.     Publication.  Once any Examiner objections are overcome, the application is "Published for Opposition" in the official Trademark Gazette of the U.S. Patent and Trademark Office.  Third parties have a 30 day period to file an objection to your application.

STEP 6.      Notice of Allowance.  If no third-party opposes your application during the 30 day period (or you overcome a NOTICE OF OPPOSITION as filed by another) your application will be granted a "Notice of Allowance" and should proceed registration (Step 8 below) within several months.   However, in the event you filed an Intent-to-Use Application (meaning that you have not used your mark in commerce as of the date you filed the application, you are required to file a Statement of Use (Step 7 below)).

STEP 7.     STATEMENT OF USE.  If you filed an Intent-to-Use Application, you need to file a Statement of Use with evidence that you have used your trademark in commerce in order for your mark to register.  The Statement of Use must be filed within three (3) years of the date of Notice Allowance (Step 6 above). However, extensions must be filed every six months and a fee is due each period.  

STEP 8.     Registration.   A short time - typically within several months - after all the requirements are met, the U.S. Patent and Trademark Office will issue a printed Registration Certificate.  

Do I need to use my mark before filing an application?

No. You do not need to have actually used your mark in commerce before filing an APPLICATION FOR REGISTRATION.  You may file an Intent-to-Use Application provided you have a good faith intent to use the trademark in commerce in the near future for the goods or services in the application.  Filing an Intent-to-Use application requires an additional step in the trademark application.  Once the U.S. Patent and Trademark Office initially approves your application by issuing a Notice of Allowance, you must file a STATEMENT OF USE within the required deadline - within three years of the date of the Notice of Allowance - in order for your application to proceed to registration. The Intent-to-Use application gives you an important benefit. Your date of priority of use is determined as of the date of filing the initial application, not based upon when you actually use it in commerce. If the registration of your mark is successful, you will have superior trademark rights to all those who began using an infringing mark after the date of initially filing the application, even if they used their trademark before you began your use.