Trademark Registration Timeline

Choosing a Trademark

January 1, 2017

The first step in the trademark registration process is to choose a trademark. While that may sound easy, some terms and phrases make better trademarks than others. Here are the types of terms, from weakest to strongest: Generic terms – Generic terms point to a category of goods or services and may not be registered as trademarks. Generic terms include category terms such as “table,” “computer,” or “law firm.” These terms cannot be registered as trademarks because they do not point to one provider of goods or services. Descriptive terms – Descriptive terms directly describe a quality or characteristic of the goods or services sold under them. Examples of descriptive terms include Sharp for televisions or Chunky Cheese for salad dressing. Descriptive terms may be registered as trademarks after they have acquired “secondary meaning,” which means that consumers have come associate those terms with the product or service they describe. Suggestive terms – Suggestive terms are seen as inherently distinctive and may be registered as trademarks. A term is suggestive if imagination or a “mental leap” is required to connect the term to the good or service being offered. Examples of suggestive terms include Microsoft for computer software or Greyhound for bus services. Arbitrary terms – Arbitrary terms are considered to be very strong trademarks. An arbitrary term is one that exists in normal language, but is used outside of its normal context. Example of arbitrary terms include Apple for computers and Amazon for books. Fanciful terms – Like arbitrary

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Trademark Clearance

February 1, 2017

After you have chosen a term or phrase for your trademark, your attorney will perform a trademark clearance search. Attorneys usually provide two types of trademark searches: (1) a “knockout” search; and (2) a full search. A knockout search will typically consist of a quick search of the US Patent and Trademark Office’s database to find existing trademark registrations, trademark applications, and abandoned applications. While a knockout search may tell you whether your trademark is likely to be registered, it may not find conflicting marks that may not be listed in the US Patent and Trademark Office’s database. A full search, in contrast, will search the US Patent and Trademark Office database, as well as other third-party databases, such as state business name filings, state trademark filings, and other search engines. Full searches also may include a written opinion letter that advises you of the strength of your trademark and provides you with a measure of the likelihood that it will be registered. A full search is often a wise investment to protect you from high costs down the road, including costs associated with a trademark infringement lawsuit, a trademark opposition, or a trademark cancellation.

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Drafting the Trademark Application

March 1, 2017

Now that a clearance search has been performed, it is time to draft your trademark application. In drafting the application, an attorney will work with you to identify the proper form for filing. An attorney will also help you choose the goods or services that should be listed on your application. If your goods or services are not listed within the standard classes provided by the US Patent and Trademark Office, an attorney will create a custom description of your goods or services for your application.

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Filing the Application

April 1, 2017

Congratulations, your trademark application is pending at the Trademark Office. Because the Trademark Office receives tens of thousands of applications each year, a few months will most likely elapse before an Examining Attorney at the Trademark Office reviews your application. In most cases, the Examining Attorney will request some minor amendments to the application. In some cases, the Examining Attorney will find more substantive reasons to issue an initial refusal to register the application. If the Examining Attorney issues any type of office action, you will have six months in which to respond. In the event no changes are needed, the Examining Attorney will approve your application for publication on the Official Gazette.

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Office Actions

May 1, 2017

The Examining Attorney reviewing your application has issued an office action. In most cases, an office action requires only minor amendments to or clarifications of the application. In some cases, an office action means the Examining Attorney has decided that there are substantive reasons to refuse registration of your application. In either case, you have six months before a response is needed, and your priority date (your application filing date) will not change. If you have not heard from us it is either because we can resolve the issues raised in the office action without further information from you or we are preparing a substantive analysis for you.

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Publication of Your Trademark

June 1, 2017

Congratulations, the Examining Attorney has approved your application for publication on the Official Gazette. Within a few weeks, your application will be published for third-party review. Although the Examining Attorney has determined that your application should register, third parties will have one month to object by filing a Notice of Opposition. Oppositions are relatively rare, and most are filed with the goal of negotiating a brief co-existence agreement. In most cases, a potential oppose would have already contacted us by this point. If a third-party does file an opposition, we will analyze the situation and advise you of the most efficient next steps. If no third parties oppose your application, the Trademark Office will either issue a registration or a Notice of Allowance (depending on your original filing basis).

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Notice of Allowance

July 1, 2017

Congratulations, the Trademark Office has issued a Notice of Allowance. Since your application is proceeding on an intent-to-use basis, you have six months from the date of allowance to show the Trademark Office that you are using your mark in interstate commerce. To show use in commerce for goods, we typically submit images showing the mark appearing on goods that are being sold or distributed. To show use in commerce for services, it is sufficient to show use of the mark in advertising if you have begun providing services using the mark. In both cases, we will need to submit a declaration called a Statement of Use declaring that your mark is currently in use for all of the goods or services identified in the application. The Statement of Use must also include the date on which you began using your mark in commerce. If you do not begin using the mark within this six-month window, we may obtain a six-month extension without paying additional government fees. If you have not begun use of your mark within one year, we can obtain further six-month extensions, but the government will require additional fees for each extension.

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Trademark Registration

September 1, 2017

Congratulations, your trademark application has matured into a registration. While you can theoretically maintain your trademark registration forever, there are periodic renewal requirements. The first renewal is due between the fifth and sixth years after registration. Your trademark registration provides you with a number of benefits, including the presumption of nationwide use, access to federal courts, and the ability to block counterfeit goods at the border by registering with the U.S. Custom’s office.

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