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What Happens After You File Your Application For A Trademark Or Service Mark?

What happens when my application arrives at the USPTO?

  • When the United States Patent and Trademark Office (USPTO) receives an application, it is given a number.
  • A USPTO clerk will look through the materials you or your attorney have sent to make sure that you have included all the required items, such as the drawings or the filing fee.
  • The USPTO then will classify the application by determining what goods or services are involved and putting the application into the appropriate category according to its classification system.
  • If you apply for a trademark electronically, you or your attorney may elect to receive an electronic confirmation in the form of an e-mail message.
  • You might not hear anything more from the USPTO for several months. You can check on the status of your application at http://www.USPTO.gov.

What are they doing while I'm waiting?

  • A trained examiner, an attorney working for the USPTO, will review your application to ensure it is complete and consistent.
  • The examiner will determine whether your mark qualifies for registration based on the applicable law.
  • The examiner will decide whether your mark contains any common or generic words that you cannot legally claim as your own.
  • If the examiner determines that the application has any problems, you will be informed so that you can provide corrections. However, in some situations corrections are not allowed, and you may need to file a new application.
  • If your application is accepted, it will be published in the USPTO's Official Gazette.
  • The USPTO will wait to see whether anybody objects to your application.
  • If there are no objections within the allowed time and if you are already using the mark, the USPTO will register the mark. If you did not start using the mark, the application will be registered once you establish that you are actually using it by filing an appropriate affidavit.

What if somebody objects?

  • If somebody objects to your mark, an experienced trademark attorney can assist you with registering the mark or resolve the dispute with the objecting party.

What if the USPTO examiner rejects my application?

  • Problems relating to the form of the application, such as the specificity in which you have described the mark or the adequacy of your drawings, will be designated on a form called an office action completed by the examining attorney. The form will instruct you regarding the necessary information that your response must contain.
  • The official action will provide the time in which you have to respond; if you do not respond within the designated timeframe, the USPTO will conclude that you have abandoned the application and you will have to start over.
  • If the examiner rejects your application for a substantive reason, such as a determination that your mark is confusingly similar to another mark or that it is merely descriptive, a trademark attorney can advise you on a proper response.
  • A substantive rejection may indicate that there may be an adversarial dispute about your mark. Again, you will want to consult your trademark attorney.
  • The USPTO may then rule on the application and may reject it. Your attorney can help you decide whether to appeal this ruling and where you should present your appeal. An appeal may be presented to the administrative appeals board, referred to as the Trademark Trial and Appeal Board (TTAB), or you can file an action in federal court. Your attorney will be able to explain the advantages and disadvantages of each option, tell you what is involved (including the estimated time and cost). Your attorney can also advise you of your options if your first appeal is unsuccessful.
  • If your application is rejected on the basis that it is merely descriptive, you may be able to register your mark on the Supplemental Register. After five years you can ask to have the mark moved to the Principal Register. You can also ask to have the mark moved if you can establish that your mark has acquired a secondary meaning such that when people see it or hear it, they think of your product.
  • Thomson-West provides print and electronic products that provide further information about this process and the law concerning trademarks. See http://www.Thomson-West.com.

Copyright © 2008 FindLaw, a Thomson Reuters business

DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent counsel for advice on any legal matter.

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