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.