Summary Of The U.S. Trademark Application Process

by Ladas & Parry LLP

Obtaining a trademark registration in the United States is a process consisting of several phases and takes several months to several years, depending on various factors and issues raised. We highlight below the various stages of the application process, including: (I) pre-filing considerations; (II) filing; (III) examination; (IV) publication and opposition; (V) allowance (where applicable); and (VI) registration.  If you require more specific guidance, you may wish to contact an attorney in our Trademark Department.

I. Pre-filing Considerations

Some principle considerations prior to filing a U.S. trademark application are the geographic scope of the rights and the availability of the mark.

Geographic Scope of U.S. Trademark Rights

Trademark protection is territorial, meaning that rights are confined to the country or geopolitical region in which a party’s mark was applied for and registered. In the United States, the rights granted by a federal registration extend only throughout the territory of the United States including: all fifty states, the District of Colombia, Guam, Puerto Rico, American Samoa, and the United States Virgin Islands and have no effect in a foreign country. Therefore, a party who is seeking to extend and protect their trademark in other countries must also apply for the mark in such countries in accordance with the requirements of that country or region.

Availability and Clearance

Trademarks serve as source identifiers, so they should be distinguishable from the trademarks of others to avoid confusion among consumers in relation to the goods and/or services to which they are applied. To determine whether a potential mark is available for registration and for use, it is advisable to conduct a pre-filing search in relevant databases for registered or unregistered (common law) trademarks that may conflict with a desired mark. Pre-filing search reports can guide the selection of appropriate marks and influence application strategies and can be tailored based on a client’s needs and budget. To conduct searches, we require: 1) the mark(s) of interest; 2) the actual goods and services of interest (not just the relevant class numbers); and 3) the name of the potential applicant.

Ladas & Parry offers different types of U.S. searches, including:

  • cursory/screening/knockout search: summary opinions on screenings for near-identical words in federal registrations and applications;
  • preliminary search: detailed opinions on screenings for highly similar words in federal registrations and applications; and
  • comprehensive search: detailed opinions on specialist-provided extensive searches for similar words in federal and state registrations, and in common law sources.

Comparative availability analyses between multiple prospective marks, searches for similar designs and graphic elements, and searches in other jurisdictions are also available.

II. Filing an Application

We require the following information at the time of filing a U.S. trademark application:

1. information about the applicant:

  • applicant’s name
  • address
  • entity type
  • citizenship of the person or the jurisdiction which governs the organization of the specific entity;

2. a description of the goods and/or services to be covered;

3. information about the mark:

  • for a non-stylized word mark, just the words making up the mark without any formatting or embellishments
  • for a mark including stylization or graphic elements,
    •  a high resolution image of the mark
    • a description of the mark including the position of any colors claimed
  • for a mark in non-Latin characters or non-English words, a translation/transliteration of the mark or the component terms;

4. basis for filing (any of the following):

  • actual use in interstate commerce in or with the United States
  • bona fide intent-to-use (ITU) in United States commerce
  • corresponding foreign registration(s) in the applicant’s country of origin
  • corresponding foreign application filed no more than six months beforehand (claiming priority under the Paris Convention)
  • for purposes of completeness, as an alternative to any of the above bases for filing a national application, applicants outside of the United States in countries that are members of the Madrid System can instead obtain an International Registration based on their home country registration and extend it to the United States, but such extensions of protection to the United States are beyond the scope of this article;

5. if the basis for filing is actual use:

  • a “specimen”, or sample of how the applicant uses the mark in interstate commerce in relation to each class of goods or services. A specimen shows the mark as consumers encounter it in the marketplace;
  • the date of first use in commerce in or with the U.S. in relation to each class of goods or services.

6. a signed declaration, which may be provided subsequently.

III. Examination Process (Prosecution)

Approximately three to five months after an application is filed, an Examining Attorney is assigned and reviews the application. The Examining Attorney will raise objections ranging from minor formalities to refusals on the grounds that the proposed mark cannot function as a trademark or conflicts with an earlier registered (or pending) trademark. Objections are usually raised by a formal “Office Action” or by informal correspondence. After issuance of an Office Action, a complete response is due within six months, and no extension is available. A response may raise new issues which could cause the issuance of a subsequent Office Action. If no new issues arise and the Examining Attorney is satisfied with the applicant’s response, the mark will proceed to the publication phase. However, if the Examining Attorney maintains his/her objections or refusals, a “final” Office Action will issue. The applicant then has a second opportunity to file a response within six months to overcome the issues maintained by the Examining Attorney.

The same six-month window following a “final” Office Action applies to filing a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB). If an appeal is not filed, and the applicant’s response does not satisfy the Examining Attorney, the application will be deemed abandoned. A timely filed appeal initiates a separate process before the TTAB that is not discussed here.

The length of the examination process varies based on the particular issues facing each mark, but typically ranges from three months to two years. The duration can be substantially longer when examination has been suspended. Examination can be suspended for any of several reasons including while a cited third-party application for a similar mark remains pending or until the foreign registration on which the application is based is obtained and submitted.

However, since the Examining Attorney can raise new issues at any point in the examination process, the duration of the examination period can be difficult to estimate accurately.

IV. Publication and Opposition

A trademark application that has passed through the examination process, with the exception of an application on the Supplemental Register, is published for opposition purposes in the Trademark Official Gazette. Third-parties have 30 days from the date of publication to object to the trademark application by either filing a Notice of Opposition or requesting an extension of time to oppose. A potential opponent can obtain extensions of time to oppose, under some conditions for up to one hundred and fifty (150) days beyond the initial opposition. To do so, a potential opposer may need to show good cause or obtain the applicant’s consent.

V. Allowance*

*This section applies to Intent-to-Use applications only.

If an application is filed based in whole or in part on intent-to-use and no third-party opposes it during the publication period, the USPTO will issue a Notice of Allowance. The applicant then has six months to either commence use and submit a signed declaration, called a “Statement of Use”, or request an extension. The Statement of Use attests to the applicant’s use of the mark, and must be accompanied by acceptable evidence of the use (one specimen per class) and claimed dates of first use. An extension request defers having to provide evidence of use for an additional six months. An applicant with “good cause” for non-use may receive up to five extensions, totaling a maximum of three years from the Notice of Allowance, until the USPTO will require proof that the mark is actually in use. If an extension is not timely filed or the mark is not used within the period of the fifth extension, the application will be deemed abandoned.

VI. Registration

If an application on the Principal Register is based on actual use or a foreign registration, or is an extension of an International Registration, and no third-party opposes it during the publication period, the USPTO will issue a Certificate of Registration. Such registration typically issues within approximately one to three years from the time of filing. For intent-to-use applications, a Certificate of Registration will issue after evidence of use has been accepted. Applications on the Supplemental Register proceed to registration after ex-parte examination is completed, as they are not published for opposition.

An Owner’s Responsibilities

Upon receiving a registration, an owner is responsible for maintaining the strength and scope of its rights through proper monitoring and enforcement. The USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for related goods or services. However, due to limitations in the examination process, registrants need to monitor and raise objections to third party applications for similar marks as well. They are also responsible for ensuring similar marks are not used on similar or related goods or services without appropriate authorization and to take appropriate action against such unauthorized uses. If owners do not attend to these responsibilities, they could lose the ability to enforce their exclusive rights in the mark against others.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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