Understanding the USPTO Trademark Timeline and Examination Process

4 minute read
Lloyd & Mousilli always endeavors to educate our clients on the work that is being done on their behalf. With that objective in mind, we have created this article for our customers to understand the process and the time frame in filing Trademark. Our goal is to make the process easy and hassle-free for our customers.

In this article, we have provided all the steps involved,from filing to declaration of Trademark.

Step 1. Application Filed:

This step takes about 3 months. Lloyd & Mousilli filesthe application on your behalf based on your use of trademark in commerce. Thefiled application is assigned with a Serial Number. This number should alwaysbe referenced when communicating with the USPTO.

Once filed, you can check the status of any applicationthroughout the entire process by entering the application serial number at http://tsdr.uspto.gov/or by callingthe trademark status line at 571-272-5400 or you can wait for the updates fromus, we will update you on a regular basis.

Step 2. USPTO reviews application: 

Once the minimum requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. This process takes about 1 month before moving onto step 3b.

Step 3a. USPTO publishes mark: 

If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

Step 3b. USPTOissues letter (Office action): 

If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, applicant must submit a response that addresses each refusal and requirement. Within 6 months go to step 4a or step 4b.

Step 4a. Applicanttimely responds: 

In order to avoid abandonment of theapplication, applicant must submit a timely response addressing each refusaland/or requirement stated in the Office action. With Lloyd & Mousilli,there is no reason for the application to be abandoned.

The examining attorney will then review the submitted response to determine if all refusals and/or requirements have been satisfied. Approximately 1 to 2 months go to step 5a or step 5b.

Step 4b. Applicantdoes not respond and application abandons: 

If the applicant does not respond within 6 months from the date theOffice action was issued, the application is abandoned. The term “abandoned”means that the application process has ended and the trademark will notregister. Filing fees are NOT refunded when applications abandon.

Abandoned applications are “dead,” since they are no longer pending orunder consideration for approval. To continue the application process, theapplicant must file a petition to revive the application within 2 months of theabandonment date. If more than 2 months after the abandonment date, thepetition will be denied as untimely and the applicant must file a newapplication with the appropriate fee(s).

To make sure this will not happen, Lloyd & Mousilli offers thisservice to our customers.

Step 5a. USPTOpublishes mark: 

If the applicant's response overcomes the refusals and/or satisfies allrequirements, the examining attorney approves the mark for publication inthe Official Gazette (OG).The OG, a weekly online publication, gives notice to the public that the USPTOplans to issue a registration.

Approximately 1 month after approval, the mark will publish in the OGfor a 30-day opposition period. Any party who believes it would be harmed bythe registration may file an objection (opposition) within that 30-day periodwith the Trademark Trial and Appeal Board.

No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

Step 5b. USPTOissues final letter (Office action): 

If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.

Step 6a. Applicanttimely responds and/or files appeal: 

To avoid abandonment of the application, the applicant must submit atimely response addressing each refusal and/or requirement stated in the“Final” refusal letter (Office action).

Alternatively, or in addition to the response, the applicant may alsosubmit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). Theexamining attorney will review the submitted response to determine if allrefusals and/or requirements have been satisfied.

If the applicant's response fails to overcome the refusals and/orsatisfy the outstanding requirements, the application will be abandoned unlessthe applicant has filed a Notice of Appeal, in which case the application isforwarded to the TTAB.

The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 7a or step 7b.

Step 6b. Applicantdoes not respond and application abandons: 

If the applicant does not respond within 6 months from the date theOffice action was issued and the applicant has not filed a Notice of Appeal tothe Trademark Trial and Appeal Board, the application is abandoned.

The term “abandoned” means that the application process has ended andthe trademark will not register. Filing fees are not refunded when applicationsabandon.

Abandoned applications are “dead,” since they are no longer pending orunder consideration for approval. To continue the application process, theapplicant must file a petition to revive the application within 2 months of theabandonment date, with the appropriate fee.

If more than 2 months after the abandonment date, the petition will bedenied as untimely and the applicant must file a new application with theappropriate fee(s).

Step 7a. USPTOpublishes mark: 

If the applicant's response overcomes the refusals and/or satisfies allrequirements of the “Final” refusal letter (Office action), the examiningattorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication,gives notice to public that USPTO plans to issue a registration.

Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

Step 7b. Applicant'sappeal sent to TTAB: 

If the applicant's response does not overcome the refusals and/orsatisfy all of the requirements and the applicant has filed a Notice of Appealwith the Trademark Trial and Appeal Board (TTAB), the appeal will be forwardedto the TTAB. Information about the TTAB can be found at www.uspto.gov.

Step 8. Markregisters: 

Within approximately 3 months after the mark published in the Official Gazette, if no opposition wasfiled, then the USPTO issues a registration. If an opposition was filed but itwas unsuccessful, the registration issues when the Trademark Trial and AppealBoard dismisses the opposition.

After a registration issues, to keep the registration “alive” the registrant must file specific maintenance documents. Between 5 to 6 years go to step 9 and every 10 years go to step 10.

Step 9. Registrationowner files Section 8 declaration: 

Before the end of the 6-year period after the registration date, orwithin the six-month grace period after the expiration of the sixth year, theregistration owner must file a Declaration of Use or Excusable Nonuse underSection 8. Failure to file this declaration will result in the cancellation ofthe registration.

Step 10.Registration owner files Section 8 declaration/Section 9 renewal: 

Within one year before the end of every 10-year period after theregistration date, or within the six-month grace period thereafter, theregistration owner must file a Combined Declaration of Use or ExcusableNonuse/Application for Renewal under Sections 8 & 9. Failure to make theserequired filings will result in cancellation and/or expiration of theregistration.

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