The Federal Registration Process

USPTO Assigns Application Serial Number

After filing an application to register your trademark, the USPTO assigns a serial number and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks and an examination the written application, the drawing, and any specimen.

USPTO Issues Letter (Office Action)

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or email (if the applicant has authorized communication by email).

Applicant Timely Responds to Letter

If the examining attorney sends an Office action, the applicant must respond to the Office action within six (6) months of the mailing date of the Office action, or the application will be declared abandoned.

USPTO Publishes Mark

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the "Official Gazette," a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the "Official Gazette," any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. It can take three to four months from the time the notice of publication is sent before the applicant will receive official notice of the next status of the application.

Registration Certificate Issues for Applications Based on Use

If the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States, and no party files an opposition or request to extend the time to oppose, the USPTO will register the mark and send the owner a certificate of registration. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.

Notice of Allowance Issues for Applications Based on an Intent to Use the Mark

If the mark is published based upon the applicant's bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight (8) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either:

(a) Use the mark in commerce and submit a statement of use (SOU); or

(b) Request a six (6) month extension of time to file a statement of use (extension request).

A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have a filing basis of intent to use a mark in commerce.

Applicant Files Timely Statement of Use or Extension Request

The applicant has six (6) months from the mailing date of the notice of allowance in which to either file a statement of use (SOU) or file an extension request. More than one extension request may be filed, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within. Please review the additional information for the SOU use and extension request processes.

Applicant Does Not File Timely Statement of Use or Extension Request

If the applicant does not file a statement of use or extension request within six (6) months from the date the notice of allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within two (2) months of the abandonment date.

USPTO Reviews Statement of Use

A statement of use (SOU) must meet minimum filing requirements before an examining attorney fully reviews it. If the SOU does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration. Submission of an SOU does not guarantee registration. The applicant may not withdraw the SOU and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the SOU.

If refusals or requirements must still be satisfied, the examining attorney issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately two (2) months. If all issues are not resolved, the application will abandon.

Applicant's Response Fails to Overcome All Objections

If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB).

Questions About Intellectual Property? - Contact Us Today

Schwartz Law Firm, P.C., is based in Charlotte, North Carolina, and represents clients throughout the United States and internationally. To speak to an experienced attorney about your patent, trademark or copyright matters, call us at 704-325-6099 or contact us online.

Source: The United States Patent and Trademark Office.