Application
All applications must be sent through the Trademark Electronic Application System (TEAS) and have associated non-refundable fees. The three cost options and their related requirements are outlined by the USPTO. Applications can also be filed by mail, although the associated fees are much higher. Following initial application, it’s important to monitor the application’s status through the Trademark Status and Document Retrieval (TSDR) system to avoid missing any deadlines. It is important to note that payment of application fees does not guarantee registration, and that rejected applications will not have their fees refunded.
USPTO review
Applications received by the USPTO will then be sent to an examining attorney to verify that they have met all of the minimum filing requirements and paid the appropriate application fees. This process may take several months, as a complete review includes a full examination as well as verification that there are no conflicting marks already registered.
In case of application rejection, the examining attorney will issue a letter (Office action) explaining the reasons for refusal or any problems with the application. It is then up to the applicant to respond to the Office action in a timely fashion. Applications left unanswered six months after the mailing date of the Office action are declared abandoned.
Mark publication
Applications which have passed the examining attorney will be published in the USPTO’s weekly publication, the “Official Gazette.” Notice and date of publication will be sent to the applicant, and potential opponents of the registration have thirty days to file their complaints. If oppositions are filed, they are dealt with by the Trademark Trial and Appeal Board (TTAB) in a manner similar to a federal proceeding, but monitored by the USPTO.
Registration certification
Marks which have passed inspection by the USPTO examining attorney and received no opposition (or unsuccessful opposition) following publication, will be issued a certificate of registration. Marks for use in commerce, foreign registrations, or the extension of protection of an international registration will have their certifications issued immediately. Marks based on intent to use will have to prove use of the mark or request an extension following the receipt of a notice of allowance.
Notice of allowance is issued by the USPTO around eight weeks after initial publication of a mark. Applicants then have six months to either submit a statement of use (SOU), proving that they have used the mark in commerce, or to request a six month extension in order to file. More than one extension can be requested, but the process is limited, and applicants must be careful to file on time to avoid their application being abandoned. Applications can also be issued a final refusal by the examining attorney if all issues are not resolved. Applications which have been abandoned or issued final refusals can either petition or appeal to the TTAB.
Approval of the SOU is the final step in the application process, and applications which receive approval will be issued a registration within two months.
Registration renewal
Registrations which have received a certificate and filed the appropriate maintenance documents are up for renewal every ten years and can be renewed indefinitely. Trademark law requires protected trademarks to remain in use; marks that have not been used for three years lose their legal protection.