This guide discusses the steps for filing an application for registration of a trademark based on use or an intent to use in commerce. It includes guidance from pre-filing preparation to filing the application and navigating the examination process, as well as other post-filing steps essential to a successful registration.
Generally, it takes 1 to 2 years from filing to obtain a federal trademark registration, assuming the application is allowed. Here are the steps to obtain a federal trademark registration.
Step 1 – Look to See if your Brand is Registrable
Before you even search and clear the mark you want to register at the federal level, you should make sure your mark is at least registrable. Certain subject matter cannot be protected or registered as a trademark. Unregistrable brands include those that are:
- Generic for a product or service
- Deceptive, including deceptively misdescriptive and geographically deceptive
- Confusingly similar to another mark
Trademarks that Cannot be Registered
Step 2 – Perform a comprehensive conflict search
Performing a trademark search is the first step in the trademark registration process. While conducting a trademark search is not required to register a trademark, doing so may save you a lot of money and frustration down the road.
Analyzing search results requires knowledge of trademark law and should be performed by an experienced trademark attorney like us. The analysis should focus on whether the proposed mark meets the criteria for federal registration and is likely to cause confusion about source, sponsorship, or affiliation with a previously used or registered trademark. Our firm specializes in performing comprehensive trademark searches for our clients. It usually takes us 2 to 3 days to conduct a full search and provide a use and registration opinion.
Why You Should Invest in a Trademark Search Before Applying for a Trademark
Searching and Clearing a Trademark
Step 3 – Prepare and file the application
Once the trademark search and analysis are complete and a decision is made to apply for registration, prepare to file the application with the United States Patent and Trademark Office (USPTO).
Trademark applications must claim at least one filing basis
- Use in commerce – Filing an in-use or 1(a) application is based on prior actual use of the mark in commerce. Use must be a bona fide use in commerce and not use solely made to reserve trademark rights.
- Intent to use (ITU) – ITU application is based on a bona fide intent to use the mark in connection with the goods and services listed in the application even though actual use has not yet taken place. USPTO examines and publishes ITU applications in the same manner as applications claiming prior actual use of the mark. However, the registration will not be issued until the applicant files an Amendment to Allege Use (AAU) or Statement of Use (SOU) and appropriate evidence showing that the mark has been used in commerce. For more information on filing an SOU, see Statement of Use.
- Qualified foreign applicant (Section 44 of the Trademark Act) – Foreign entity that owns an application or registration for the mark in another country can use this basis.
- Extension of protection to the United States under the Madrid Protocol (Section 66 of the Trademark Act) – Madrid Protocol enables an owner of a trademark application or registration in its home country to seek protection in other countries that are parties to the treaty, including the United States.
Step 4 – The application is examined by an examining attorney at the USPTO
After the application is filed, it is assigned to a USPTO trademark examining attorney. The examining attorney reviews the application to determine whether the application meets formal examination requirements, whether the trademark is eligible for registration in accordance with the Lanham Act and the USPTO’s regulations, and whether the trademark is likely to cause confusion with any other previously applied for or registered trademark.
Respond to Office Actions
An initial response from the USPTO can take anywhere from 3 to 6 months after filing an application. If the application meets all requirements and the examining attorney at the USPTO has no objections, the examining attorney will issue a Notice of Publication, which precedes publication of the mark in the Official Gazette. Otherwise, typically, the first response is an Office action, setting out the examining attorney’s objections to the application.
which can include objections due to:
- a defect in the application requirements. For example, the required identification of goods or services is not acceptable;
- ineligibility for registration. For example, the mark is generic or merely descriptive of the of the claimed goods or services; or
- a likelihood of confusion with a previously registered or applied-for mark.
In the event of an Office Action
File a response correcting any technical defects and arguing against any substantive refusals within six months of the date of the Office Action. If the response is not timely submitted, the USPTO deems the application abandoned.
Beginning December 1st, 2022, the Office Action response deadline will be three months for most Office Actions. The deadline can be extended for three months by paying a fee.
If the response does not resolve all the issues and the examining attorney issues a Final Office Action, you should file a timely response otherwise the application is deemed abandoned.
If the response to a Final Office Action does not resolve all the issues and the examining attorney issues a final refusal, consider appealing the decision by filing:
- a request for reconsideration by the examining attorney; or
- an appeal with the Trademark Trial and Appeal Board (TTAB).
In the event of an adverse decision by the TTAB, consider either:
- appealing to the U.S. Court of Appeals for the Federal Circuit; or
- filing a civil action against the USPTO in federal court.
At any time during the proceeding, consider:
- whether the mark may be eligible for registration on the Supplemental Register (for example, if the refusal is based on descriptiveness); and
- if so, amending the application to the Supplemental Register.
Step 5 – Publication
If an application passes through the examining attorney’s review without being rejected or abandoned, the USPTO publishes the mark in the Official Gazette for a period of 30 days.
During the period of 30 days, any interested party can file an opposition to the mark’s registration on the Principal Register within 30 days after the date of publication. The USPTO will extend the time period to oppose a mark’s registration on the Principal Register once for an additional 30 days if an interested party files a request to extend within the initial 30-day period.
Interested parties can file requests for extensions of time within the initial 30-day period.
Interested parties can file additional requests for extensions for good cause, but the total period of all extensions cannot exceed 180 days from the date of publication.
If an opposition is filed:
- File an answer within 30 days to avoid the application being deemed abandoned.
- Consider:
- defending against the opposition, including bringing appropriate counterclaims; or
- seeking to amicably resolve the opposition by agreement with the opposer.
If no opposition is filed against a use-based application for a mark on the Principal Register, the USPTO will register the mark.
Step 6 – If everything goes right, the applied for trademark is registered
The USPTO will not register a mark applied for on an intent-to-use basis until the applicant files a Statement of Use and an acceptable specimen showing use of the mark in the claimed class of goods or services with the USPTO. Note that a Statement of Use filed before the date the USPTO approves the application for publication is called an Allegation of Use. Therefore, if no opposition is filed against an intent-to-use application, the USPTO will issue a Notice of Allowance. The applicant then has a six-month period to file a Statement of Use and an acceptable specimen and pay the required fee.
Statement of Use Deadline
A trademark applicant can receive up to five six-month extensions of time to file a Statement of Use (including an acceptable specimen of use for the claimed class of goods or services). The applicant must properly file a request for reach six-month extension of time within the immediately preceding six-month period and pay the required fee in each case.
Extension of Time to File Statement of Use
A request for extension of time often is also filed along with the Statement of Use and the specimen evidencing use to ensure that if the Statement of Use or specimen is defective, the application is not deemed abandoned.
If any individual extension of time request is not timely filed, or the Statement of Use (including an acceptable Specimen of Use) is not timely filed within the 36-month period, the USPTO deems the application abandoned.
Certificate of Registration
If a mark proceeds to registration, the USPTO issues an electronic certificate of registration by uploading it to the TSDR system and emailing a link to the trademark owner and all email addresses of record.
Want to Register a Trademark?
Get in touch with us to schedule free trademark consultation. We can be reached at 1 800-651-7301, via email at info@trademarkattorneyslosangeles.com, or through our contact form below. One of our attorneys will get back to you within 24 hours of your submission to schedule a phone consultation, virtual meeting, or an in-person meeting with you. We look forward to hearing from you!