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Understanding the Trademark Application Process

June 21, 2024

As with any type of professional milestone or achievement, the granting of a trademark registration is the result of what is a relatively long process.  From start to finish, achieving mark registration on the United States Principal Register can take a year or more from the time that you initially submit your application to the United States Patent & Trademark Office (“USPTO”).  So what’s going on during that time after we hit the “SUBMIT” button and pay the fees?  Let’s take a closer look at that part of the process.

After you have submitted your trademark application, it will feel like the classic game of “hurry up and wait”.  Currently, the USPTO is examining trademark applications that were submitted nearly nine months ago, per its website.  This means that the soonest you can expect a Trademark Examiner’s eyes to land on a trademark application that you submit on April 1, 2024, will be January 2, 2025 – assuming the USPTO keeps its normal holiday practice of closing on January 1 next year and maintains its optimistic pace of only being nine months behind the applications coming into the USPTO.  So what happens in those intervening months?  Your trademark application “waits in line” at the USPTO.  But never fear!  Your Dates of First Use are locked in, as is your Priority Date if you have filed an Intent-To-Use, or a “1B” application, as long as your application remains alive and pending.  (More on 1A vs. 1B Applications in the near future, so keep checking back!)

A more realistic approach than expecting correspondence from the USPTO at that nine-month mark is what we tell clients:  We can expect to hear back within about a year after we submit that application.  Usually, sometime within that first year after you have submitted your trademark application to the USPTO, you can expect to hear something back from the Trademark Examiner who has been assigned to examine your application.  For some marks, that communication will simply tell you that the Examiner has found nothing amiss with your mark and your application and that application is moving on to the publication stage of the proceedings.  This is the best-case scenario. 

For some applications, and this proportion of the application pool has grown slightly over the last several years, the Examiner will issue an Office Action.  This is simply a piece of correspondence from the Examiner to the Applicant regarding a specific trademark application, but the importance of filing a timely response to any Office Action is critical to the application itself.  If a timely response is not filed as to any Office Action, the application will be listed as Abandoned by the USPTO.  Sometimes, these Office Actions are merely requiring the Goods and Services identification to be amended to include or exclude specific items, or a Disclaimer is required for common words such as “BANK” or “STORE”, thereby allowing other people to use these common words apart from the way that the applicant is using them in his or her mark. 

Many times, however, these Office Actions will require a detailed response written after legal research has been performed to rebut the Examiner’s reason(s) for rejecting any application from registration on the Principal Register.  In most cases, the best chance an applicant has of overcoming an Examiner’s objections to any particular mark’s registration will be to engage the services of an experienced trademark attorney to do a formal Response to the USPTO or possibly an appeal of the Examiner’s rulings.  Office Actions have tight deadlines in which an applicant must file a response or, as previously stated, the application will be allowed to Abandon, and your rights, priority dates, etc., will cease to exist once this happens, so engaging the timely help of an attorney is critical at this juncture.

In an ideal case, the attorney would have already been involved in the application and even filed the application with the USPTO on behalf of the applicant.  It is much easier for the attorney to be on board from the outset of an issue like this, than for an attorney to jump on board mid-journey.  Bringing an attorney on later in the game of your trademark application process can result in increased fees needing to be charged to you for the attorney to do the work, as more “homework” is required on the attorney’s side in order to be properly up to speed and briefed on the arguments that will need to be made in an attempt to overcome the Examiner’s objections that are cited in any Office Action. 

The best practice is to engage the attorney from day one of your trademark quest, and have those Office Actions timely responded to by working closely with that attorney once the Office Actions issue.

After you have cleared the Office Action hurdle, you are in the homestretch of the trademark application process.  You can now expect for the mark application information, including a full recitation of the mark itself (or a drawing of the mark, if the mark is stylized or contains images), to be published in the USPTO’s Trademark Official Gazette.  During this publication period of thirty (30) days, any member of the public may object to registration of the mark.  If (as is most often the case) no objection is received by the USPTO within that 30-day period, then your mark will go ahead and be granted a spot on the Principal Register at that time.

Stay tuned for more discussion and information about what happens AFTER you have successfully registered your mark, in a future article on these topics.