A Brief Overview of the Federal Trademark Registration Process

February 2010

This article is intended to provide an overview of the trademark registration process for clients who have not been through the process before. Prior to filing a federal trademark application, we always advise conducting an informal trademark search, a formal trademark search, or both. An informal trademark search is conducted by our office and consists of a search of the federal trademark filings (both registrations and pending applications). Oftentimes a proposed trademark is eliminated during the informal search stage due to conflicts with other marks. If a mark clears the informal trademark search, then you may elect to conduct a formal trademark search. A formal trademark search is performed by a trademark search firm and, in addition to federal trademark filings, covers state trademark filings, unregistered uses of the mark, company names and domain names. In any branding or rebranding process, it is important to go through a search process before settling on a name.

The next step is to prepare and file a federal trademark application. There are two types of applications. The first is a use-based application; this type of application would be filed if you or your licensee are/is already using the mark in interstate commerce. The second type of application is called an intent-to-use (ITU) application. An ITU application allows you to file for federal trademark protection even before the mark is in use. Ultimately, you will have to use the mark in interstate commerce, which means across state lines, in order for the federal trademark registration to issue. If you are using (or intend to use) the mark solely within the boundaries of a single state, then a state trademark registration would be more appropriate.

Approximately seven months after the application is filed, we will receive either a Notice of Publication or a first Office Action. If there are no issues at all with the application, then we receive a Notice of Publication. It is much more typical, however, to receive an Office Action. In the Office Action, the examiner will state whether he or she has found any other confusingly similar marks (if so, registration will be refused) or if there are any other issues that need to be addressed, like revising the description of goods or adding a disclaimer. We file a response to the Office Action, and if our response adequately addresses the examiner's concerns, we will get a Notice of Publication. If we are unable to address the examiner's concerns, then registration will be refused.

The Notice of Publication sets forth the date on which the mark will be published in the trademark office's Official Gazette. Some companies monitor this publication, and if they feel they have a basis for opposing registration of the mark, they may file an opposition. The mark is only published for 30 days, and the opposition must be filed during the 30-day opposition period. A third party may request a 30-day extension of time in which to file the opposition (which would give them a total window of 60 days in which to file the opposition), but the extension request must be filed within the first 30-day period. If you make it through the opposition period without an opposition being filed, then you will receive a Notice of Allowance in an ITU application or a Certificate of Registration in a use-based application.

With an ITU application, you have six months from the date of the Notice of Allowance in which to file what is called the Statement of Use. You cannot file the Statement of Use unless the mark is actually being used by you (the trademark owner) or your authorized licensee in interstate commerce in connection with bona fide sales of the goods or services covered by the application. You may obtain a total of five six-month extensions of time in which to file the Statement of Use, which means you have up to three years from the date of the Notice of Allowance in which to file the Statement of Use. If the Statement of Use meets trademark office requirements, your registration will issue shortly thereafter. If you fail to file the Statement of Use within this three-year period, then the application will go abandoned.

Once the Certificate of Registration issues, the first set of renewal affidavits is due between five and six years after the registration date. If you file what is called a Section 15 affidavit, then your ownership of the mark becomes incontestable in all 50 states. If the registration is on the Supplemental Register as opposed to the Principal Register (see our previous article on the differences between the Supplemental and Principal Register), then we also revisit at this time the option of re-applying for registration on the Principal Register based on five years of use of the mark in interstate commerce. We calendar the first and all subsequent renewal dates and send reminders to our clients as those dates approach.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.