What is the Trademark Registration Process?

Trademark Registration

Applying for federal trademark registration is typically a wise investment for individuals and businesses. The benefits that come with registration, including nationwide exclusivity to use your mark in connection with your goods or services, can be extremely valuable. But, the trademark registration process can be confusing. This post explains the trademark registration process for applications submitted on a Section 1(a) use in commerce basis.

The Trademark Registration Process

Step 1: Trademark Clearance

It is wise for anyone considering trademark registration to obtain a formal clearance opinion regarding any risks associated with a proposed trademark application. Applying for trademark registration puts the world on notice of your claimed rights in a mark. As a result, it is important to understand whether you are infringing on any existing marks before filing the application.

Step 2: Completing the Application

The application itself is rather straightforward are requires the applicant to identify the trademark owner, address, mark, description of goods and services, date of use in commerce, and a sworn statement as to the applicant’s exclusive rights to the mark. The applicant is also required to pay the filing fee, which varies depending on the specific application.

Step 3: Office Actions

Once the application is submitted to the United States Patent and Trademark Office, it will be assigned to an examining attorney. The examining attorney will review the application and test it against procedural and substantive trademark law. If the examining attorney finds any reasons not to register the mark, he or she will issue an Office Action.

Applicants are required to respond to the Office Action within 6 months of its issuance. If Applicant is able to correct the errors noted by the examining attorney, the mark will proceed to the next step. If the examining attorney upholds the office action, the mark will not proceed to registration unless the applicant appeals the examining attorney’s decision to the TTAB.

Step 4: Opposition Period

Once the mark clears the examining attorney’s review, it is published for opposition in the Trademark Official Gazette (TMOG) for a period of 30-days. During this period, any third party that believes it will be injured by the registration of the applied for mark may file a Notice of Opposition in the TTAB. If a Notice of Opposition is filed, the trademark application is suspended pending the opposition proceeding.

If an opposition is not filed within the 30-day period, the mark proceeds to the next step.

Step 5: Certificate of Registration

After conclusion of the opposition period, the mark will proceed to final registration. In approximately 12 weeks after the opposition period, the mark will be registered.

If you have questions about the trademark registration process, or about a pending trademark opposition or cancellation, contact Revision Legal’s experienced trademark attorneys though the forms on this page or by calling 855-473-8474.

Editor’s note: this post was originally published in March, 2015. It has been updated for clarity and comprehensiveness. 

 

Extra, Extra!
Recent Posts

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Copyright

The holders of copyrights for newspapers, magazines, books, and other publications are involved in numerous legal battles with owners of AI modules over alleged copyright infringement. The plaintiff copyright owners claim that the AI large language modules have been trained on huge quantities of copyrighted materials without permission and — most importantly — without payment. […]

Read more about Does the AI-Copyright Legal Fight Represent a National Security Threat?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Corporate

The owners of most small, closely-held businesses negotiate and sign some form of an “Owner’s Agreement.” An important part of such Agreements is the “Buy-Sell” provisions. These are often some of the most difficult to negotiate. The gist of the buy-sell part of the Owners’ Agreement is to establish the rules for what happens if […]

Read more about How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Status on Social Media Moderation Statutes and Cases

Status on Social Media Moderation Statutes and Cases

Internet Law

Social media content moderation by technology platforms was one of the “hot” legal topics in 2023-2024. Three States — California, Texas, and Florida — passed different statutes to either require more content moderation (California) or to limit such moderation (Texas and Florida). All the statutes, in one way or another, demanded more transparency and information […]

Read more about Status on Social Media Moderation Statutes and Cases

Put Revision Legal on your side