Generally, and in simplified form, there are four steps in obtaining a registration from the U.S. Trademark Office for a trademark. These are:

• Preparing and filing the application (and paying the appropriate fees) — this step takes some time since a great deal of information must be included in the application and valid and acceptable specimens of use must be included; the application process is now almost entirely digital
• Review and examination — this step involves review/examination of the application by a Trademark Examiner (a Trademark Office attorney); review includes issues such as completion of information, compliance with statutory requirements, evaluation of uniqueness, etc.
• Publication of the potential trademark — if the trademark passes review and examination, the next step is publication; if a third party thinks the proposed trademark infringes their trademark or is otherwise objectionable, an “Opposition” can be filed; publication is in the Trademark Office’s Official Gazette which comes out electronically once a week; publication is for 30 days
• Approval and issuance of Registration Certificate — if no Opposition proceeding is filed, then the trademark application is approved; for Applications involving a “being-now-used” trademark, a Certificate of Registration will be issued; if the Application is for an “intent-to-used” trademark, the Certificate of Registration will be issued once proper specimens of use are provided

If everything “goes well,” the process will take maybe ninw months to a year. Between the first and second step is from two to three months, depending on how busy the Trademark Office is. At some point, an Examining Attorney will be assigned, and the process of examination will take three to five months. Then, as noted, the publication and Opposition period lasts a month. After that, it takes a couple of months for the Certificate to be issued (unless the Application is an intent-to-use Application, in which case, the time will extend until valid and proper specimens of use are filed).

Each step has various sub-steps. For example, part of the first step involves creating a valid trademark and conducting trademark conflict/exclusion searches. One of the legal requirements of registering a trademark is that the proposed trademark be unique. That is, it cannot be the same as or confusingly similar to an existing trademark (whether registered or not). This is actually a task undertaken by the Examining Attorney, but it is a bad form to submit an Application where an existing trademark will disqualify the Application.

If there are issues, the second step may also involve sub-steps. These may include communications from the Examining Attorney — called Office Actions — that raise legal issues, ask for additional information or announce that the Application is incomplete or that it needs supplementation. Responding to an Office Action may be “easy” but may also involve more complicated revisions to the Application or the withdrawal or even the abandonment of the Application.

At the third step, the only real sub-step occurs if a third party files an Opposition Proceeding. Then, a mini-trial via paper submissions is involved. If the Opposition fails, the Application goes forward (although the third party can appeal). If the Opposition succeeds, then the Application is denied (although, again, there can be appeals).

In the fourth step, there are only sub-steps for intent-to-use Applications. Those steps involve the use of the trademark in interstate commerce and providing specimens of use in a timely manner.

Contact The Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Office Actions: The Most Common Hurdles in Trademark Examination

An Office Action is a written communication from the Examining Attorney identifying problems with a trademark application that must be resolved before the application can proceed. Office Actions are common — a significant percentage of all trademark applications receive at least one Office Action. Understanding the types of Office Actions that may be issued helps applicants prepare and respond effectively.

The most frequently issued Office Actions include:

• Likelihood of Confusion (Section 2(d) refusals). This is the most common substantive refusal. The Examining Attorney will refuse registration if the proposed mark is likely to be confused with an existing registered trademark. The analysis considers factors identified in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — the leading case on likelihood of confusion in trademark examination — including the similarity of the marks in appearance, sound, meaning, and commercial impression; the relatedness of the goods or services; the channels of trade; and the sophistication of the relevant consuming public.
• Merely Descriptive refusals (Section 2(e)(1)). A mark that merely describes a feature, quality, or characteristic of the goods or services cannot be registered on the Principal Register without proof of acquired distinctiveness. The Examining Attorney will issue a refusal and require the applicant to either argue that the mark is not merely descriptive, submit evidence of acquired distinctiveness, or amend the application to seek registration on the Supplemental Register.
• Specimen issues. The specimens submitted with the application must show the mark as actually used in commerce in connection with the identified goods or services. Common problems include specimens that show the mark on internal documents rather than in actual commerce, specimens where the mark shown differs from the mark in the application, or specimens that do not clearly show use of the mark in connection with the identified services.
• Identification of goods/services. The description of goods and services must be clear, definite, and not overly broad. Vague or indefinite identifications — such as “general business services” or “miscellaneous goods” — will be refused. The Examining Attorney typically provides acceptable alternative language.

Responding to Office Actions: Deadlines and Strategy

An applicant has three months from the date of an Office Action to respond, with a three-month extension available upon payment of a fee. Failure to respond within the statutory period results in abandonment of the application. Responding to Office Actions — particularly likelihood of confusion refusals — requires legal analysis and, often, legal argument. A well-crafted response to a likelihood of confusion refusal may argue that the marks are sufficiently dissimilar in appearance and commercial impression, that the goods or services are sold through different channels of trade, or that the purchasing public is sophisticated enough to distinguish between the marks. Supporting declarations, market evidence, and third-party use evidence are tools that experienced trademark attorneys deploy in these responses.

The Opposition Period: Third-Party Challenges After Publication

Publication in the Official Gazette opens a 30-day window during which any person who believes they would be damaged by registration of the proposed trademark may file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). Oppositions are formal adversarial proceedings before the TTAB — not the Examining Attorney — and are governed by the TTAB’s Rules of Practice, which closely resemble federal civil litigation procedure.

A third party seeking to oppose a trademark application can request a 30-day extension of time to oppose — with additional extensions available for good cause — before filing the actual Notice of Opposition. Applicants who receive a notice that an extension of time to oppose has been filed should take the development seriously: it signals that an interested party is evaluating whether to challenge the application.

Common grounds for opposition include: likelihood of confusion with the opposer’s mark, false suggestion of a connection with a person or institution, that the mark is primarily merely a surname, that the mark is generic, and priority of use. The TTAB proceeding involves written pleadings, discovery (including depositions, document requests, and interrogatories), trial by submission of evidence, and briefing. While some oppositions settle quickly, contested TTAB proceedings can take two to three years from filing to final decision.

After Registration: Incontestability and Ongoing Protection

Registration is not the end of the trademark process — it is the beginning of a maintenance and enforcement program. After registration, trademark owners should:

• Docket the Section 8 and Section 9 maintenance and renewal deadlines and file timely declarations of continued use
• File a Section 15 Declaration of Incontestability between the fifth and sixth anniversary of registration to strengthen the mark’s legal status
• Monitor the USPTO Official Gazette for newly published applications that may conflict with the registered mark and consider filing oppositions where appropriate
• Enforce the mark against infringers through cease-and-desist letters, DMCA takedown requests (for online infringement), Customs recordation to block counterfeit imports, and litigation where necessary

Contact the Trademark Attorneys at Revision Legal

Navigating the trademark registration process — from initial clearance search through examination, publication, potential opposition, and post-registration maintenance — requires experienced legal guidance at every step. The Trademark Attorneys at Revision Legal handle trademark applications, Office Action responses, TTAB proceedings, and trademark enforcement for businesses of all sizes. Contact us through the form on this page or call (855) 473-8474.