Timeline of a Trademark

Often clients ask us the question, what is the timeline of the trademark registration process? Below is the timeline directly from the USPTO, re-formated by us at Engelhardt Law. All links link to the USPTO site to give you direct access.

1. Application filed Then about 3 months until the next step (please note, the following will say simply “about x Month(s)).

2. USPTO reviews application About 1 Month

3a. USPTO approves and publishes trademark About 3 months

OR

3b. USPTO issues letter (office action) Within 6 months

4a. You submit timely and complete response About 1-2 months

OR

4b. You do not respond and application abandons

5a. USPTO approves and publishes trademark About 3 months

OR

5b. USPTO issues final letter (office action) Within 6 months

6a. You file an appeal and/or submit timely and complete response About 1-2 months

OR

6b. You do not file appeal or fix issues and application abandons

7a. USPTO approves and publishes trademark About 3 months

OR

7b. TTAB processes your appeal

8. USPTO registers your trademark

Between 5-6 yrs.Every 10 yrs.

9. You file Section 8 declaration

AND

10. You file Section 8 declaration and Section 9 renewal

This timeline does not cover every scenario. If you are well outside the timeframes, call your assigned examining attorney at the phone number on the office action, or contact the Trademark Assistance Center (TAC) at 571-272-9250 (press 0), toll-free at 1-800-786-9199 (select option 1), or email TrademarkAssistanceCenter@uspto.gov.

Step 1. Application filed. You file an application based on use of your trademark in commerce. Your application is given a USPTO serial number. You can check the status of your application by entering the serial number in the TSDR database or calling the trademark status line at 571-272-5400, or toll-free at 1-800-786-9199 (select option 1, then option 2). In about three months go to step 2.

Step 2. USPTO reviews application. If your application meets the filing requirements, it’s assigned to an examining attorney, who reviews it to determine whether federal law permits registration of your trademark. Filing fees are generally not refunded, even if your application is later refused registration. In about one month go to step 3a or step 3b.

Step 3a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire a U.S.-licensed attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 3b. USPTO issues letter (office action). If the examining attorney finds grounds for refusing to register your trademark, or if your application does not satisfy all legal requirements, the examining attorney issues a letter (office action) explaining those refusals and/or requirements. You must respond to the office action within six months of the date it was issued. Within six months go to step 4a or step 4b.

Step 4a. You submit a timely and complete response to the office action. To avoid abandonment of your application, you must timely submit a response that overcomes each refusal and/or satisfies each requirement in the office action. The examining attorney will review your response. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, "Response to Office Action." In about one to two months go to step 5a or step 5b.

Step 4b. You do not respond and your application abandons. If you don’t respond within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 5a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application meets all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that we will be registering your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire a U.S.-licensed attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 5b. USPTO issues final letter (office action). If your response does not overcome all refusals and/or satisfy all requirements, the examining attorney will issue a “final” refusal letter (final office action) that makes final any remaining refusals and/or requirements. You may appeal the examining attorney’s decision by filing an appeal with the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter that overcomes the remaining refusals and satisfies the remaining requirements. And in limited circumstances you may file a petition to the Director. For more information on appeals, visit the TTAB webpage and see our video, “TTAB.” Within six months go to step 6a or step 6b.

Step 6a. You file an appeal and/or submit a timely and complete response to final letter. To avoid abandoning your application, you must timely file a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter (office action) to the examining attorney, who will review it to see if it overcomes all final refusals and/or satisfies all final requirements. If not, and you did not file a Notice of Appeal, your application will be abandoned and your trademark will not register. In this situation, filing fees are not refunded. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go to step 7a or step 7b.

Step 6b. You do not file an appeal or fix remaining issues and your application abandons. If you don’t file an appeal or otherwise fix all the remaining issues within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 7a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition ”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire a U.S.-licensed attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 8.

Step 7b. TTAB processes your appeal. If your response does not overcome all final refusals and/or satisfy all final requirements and you filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be processed and instituted by the TTAB. For more information on appeals, visit the TTAB webpage and see our video “TTAB.”

Step 8. USPTO registers your trademark. Within about three months after your trademark publishes in the Trademark Official Gazette, if no opposition was filed, we register your trademark. If an opposition was filed but was unsuccessful, we will register your trademark after the Trademark Trial and Appeal Board dismisses the opposition. After your trademark registers, you must periodically file maintenance documents and fees within specific time frames to keep the registration active. For information on keeping your registration active, as well as the optional Section 15 filing to enhance the legal strength of your registration, see our video, “Post-Registration Issues.” Between five to six years go to step 9 and every 10 years go to step 10.

Step 9. You file a Section 8 declaration. Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, you must file a Declaration of Use or Excusable Nonuse under Section 8 and pay applicable fees. This declaration must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled.

Step 10. You file a Section 8 declaration and Section 9 renewal. Within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, you must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9 and pay applicable fees. This declaration generally must include a verified statement that your trademark is in use in commerce, along with evidence showing that use, and the renewal is a statement requesting that the USPTO renew your registration. If you don’t file this combined declaration, your registration will be canceled and expire.

Make Money With Your Mark

Can having a federally registered trademark make you money? Yes. Here are three ways.

(1) Sell It! 

Our firm has been apart of mark transaction with businesses that are generating very little income, and those marks can still sell for tens of thousands of dollars. That's right "tens" with an "s." If your mark has been in the marketplace and gained any traction it may be worth something to either your competition or an up and comer in the industry. Check out this site which sells brands for sale.

(2) License It! 

The phrase, “Let’s get Ready to Rumble” has made well over $400 million in licensing revenue according to ABC. And there are many other companies, brands, and small businesses that make money from trademarks. Now with the advent of the internet, it has made it easier than ever to market your trademarks in order to make money from them. You may not earn you millions, but with the right information and effort, you too can legally protect and market your trademarks in order to make money.

(3) Legal Damages

Yes, one way to see a return on your investment is by filing suit against an infringing party. If you are successful on your claims the damages can be enormous. See this win by a small company against Uhaul to the tune of 40 million dollars. 

Finally 

The foundation for the above is two-fold: first, that you have a mark in commerce that you are using and creating an association between your mark and the great products or services you offer, and second, that you have a federally registered mark. If you don't have your mark registered with the United States Patent and Trademark Office, we will give you a free consultation on whether or not you have a protectable mark. Simply, click here. 

Confusion: 1

Let's talk trademarks and likelihood of confusion

Trademark registration will be denied if the USPTO attorney believes there is a liklihood of confusion. The primary determiner is based on a test called the Poloraid test from a 1961 federal case, which asks these 9 questions to determine whether confusion can be found. 

• Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion.
• Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
• Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
• Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.
• The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
• Evidence of actual confusion. Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
• Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
• Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
• related products and services.

If you have created a brand and you see another mark out in the marketplace that hits one of these factos reach out to us, and we can help you determine, how close you are to getting your mark denied. 

I Am Not - Trademark

When a company is deciding on their branding, it is essential to determine if a similar mark is currently in existence, and more importantly, registered with the USPTO. Will I Am, filed a mark for "I AM," as related to his "WILL I AM" mark. The problem was, there were already "I AM" marks in a similar space. The examining attorney rejected the mark registration, and litigation in the Trademark Trial and Appeal Board (TTAB) followed, where the examining attorney was justified. After the deciscion was affirmed by the TTAB, Mr. I Am's attorneys filed suit in federal court where the deciscion was again affimred. Sorry Will. Lesson here - get a search done before you file, and find out if there are similar marks out there. 

More Analysis Here

When is litigation worth it?

When is litigation worth it?

 

Before spending valuable time and resources, both financial and emotional, you should ask yourself the question: "is a lawsuit the best option here?" This is a great question to ask before committing to a course of action. Believe it or not, many people rush into the fires of litigation without doing a basic analysis of whether litigation is right in their particular circumstance. When asking yourself that basic question are two primary issues at hand: (1) do you have a cause of action, and (2) is a remedy available

First, do you have a cause of action. What we want to know here is, do you actually have the legal higher ground? Is there a contract that a vendor breached? Are there remedies inside that contract, such as arbitration that could potentially bar you from a lawsuit? If there is not a contract at issue, you need to find the elements of the cause of action, and find out if you have proof to establish each element. For instance, defamation per se, as applied in the business context, takes place when someone makes a negative public statement about you that tarnishes your reputation in the business community. Although there are some tricks here, basically you would need to be able to establish exactly what disparaging remark was said, by whom, when, and who was listening. If you could establish those things, you likely have a solid cause of action. 

Second, you must know if remedy is available. This is important. Far too many litigants spend their hard earned money to pursue a just cause in the courts, and come out with a judgment in hand, but a judgment debtor that has split, or are out of assets. Remember, great attorneys can help you state your cause of action before a judge, but they're of no use squeezing water from stones, and if the individual or entity you are suing has no assets, it may be prudent to invest elsewhere. Litigation is a serious undertaking so make sure to do your homework before acting. 

MOAB

Mother of all Brands.

So, we've been hearing about the MOAB bomb these days, not the MOAB in the picture but, it gives us an opportunity to talk about the difference between a USPTO 1A and 1B (below) application.

The 1A application is filed when your mark is being used in commerce: you are selling stuff. 

The 1B application is used when you or your business intend to use the mark in the marketplace. 

There are advantages to filing the 1B: first, (1) your initial filing date will become the date of your first use of the mark, if you make sure to take the other necessary steps to fulfill the registration requirements. You may be asking, why does this matter? Please be aware that this first-use date can be very important in the event a conflict develops with another mark—in the USPTO or in the marketplace. BTW the reason you are protecting your mark in the first place is in case conflict arises. 

One of the other major benefits is that it puts parties attempting to use the same or a confusingly similar mark on notice. I would liken it to a flag being waved over you business plan. The flag says: "we are in the process of rolling out  our business in a strategic and legally sound way, if your intention is infringement, please note we are competent entrepreneurs." It's a big flag, I know. Reach out if you have a brand idea you are developing, it's always best to do a preliminary search before registering. That way you wont have to pay again fro rebranding.