Trademark Applications

Once a comprehensive search has been conducted, the next step in the process is to file the trademark application with the United States Patent and Trademark Office (USPTO). The question is, who should file it? Every trademark applicant has three basic choices:

  1. Do it yourself. The problem is that many of these applications are rejected for failing to meet minimum statutory filing requirements. Further, all too many applicants apply in the wrong class of goods or services, rendering the application moot and forcing them to resubmit a new one all over again.
  2. Use a document preparation service (local or web-based). While using these services does increase the chance of a successful initial filing, these companies are not licensed attorneys and therefore cannot give legal advice. Should the examining attorney have questions or write an “Office Action” (see below), few non-lawyers can respond with the proper legal arguments or citations to avoid a refusal to issue the mark.
  3. Hire a trademark attorney. While only slightly more expensive than option #2 above, an experienced trademark attorney can navigate your application through a myriad of substantive objections issued by the USPTO’s examiner. Certainly, no attorney can guarantee that a particular mark will be registered, even after an exhaustive search. However, your greatest likelihood of success will always be with an application prepared by an attorney.

The timeline for a trademark application with the USPTO is notoriously slow. It usually takes between 3 and 6 months just to get your application assigned to an examining attorney, and usually another month or so to get their initial response. If all looks good, they will submit your mark for a 12 week run in the Official Gazette (the USPTO’s trademark publication) so as to give others an opportunity to object to your proposed mark. Assuming no one objects, in about 45 days your mark will be issued either a:

  • Registration number (if your application stated that you were already using the mark in interstate commerce; or
  • Notice of Allowance (if your application was based on an intent to use the mark in the future). The applicant then has 6 months from the date of the Notice of Allowance to begin using the mark, or to request additional 6 month extension periods (usually granted) up to a total of 3 years.

If, however, the examining attorney finds potential conflict(s) between your proposed mark and others already registered or pending, they will send out an Office Action letter indicating their reasons for an intended refusal.  This is where you really need an attorney.

Please visit any of our drop-down menu pages to the right for more specific information on your topic of interest.