Prepare Documentation
Once we have information from you, we can prepare the necessary documentation for you to approve the filing of the application. Typically, we need to know the Mark, Owner of the mark, the goods &/or services, the date the mark was first used, as well as providing evidence showing use of the mark on at least one good or service for each class. If the Mark is a design mark, we also need a JPG image of the mark in proper form.
Filing the Application
Once we have everything we need to file, including your approval, we strive to file the application that same business day.
Statement of Use
The applicant can file a Statement of Use at any time during the examination process. Click to see a flowchart of the Statement of Use process.
Examination by the PTO
Currently, the initial examination process by the PTO takes between four and six months.
Office Action
If the PTO has any issues with the application then an official issues. The applicant then has six months to submit a response to the application for further review. This process can occur several times before the application is either approved or definitively denied. Click to see a flowchart of the office action process.
Is the Application Approved?
If the PTO has any issues with the application they will issue an office action. The applicant then has the opportunity to submit a response for further review. If the applicant chooses not to respond, the application will be denied.
Blackout Period
???
Publication
Once the application is approved, publication usually takes around six weeks. Once it is published, there is a thirty day window for parties to file an opposition to the trademark which can be extended by upto 90 days without any reasons given.
The Opposition Process
If another party is opposed to the trademark application, then they can file an opposition, which commences an approximately two year process of administrative litigation before the Trademark Trial and Appeal Board determining if the mark can be registered. Click to see a flowchart of the opposition process.
Is Anybody Opposed to the Application?
If another party is opposed to the application, they can file an opposition. The opposition process can take up to two years. Click to see a flowchart of the opposition process.
Is the Opposition Denied?
If the applicant is successful at the TTAB, the opposition will be denied and the application will be approved.
Notice of Allowance
???
Extension Request
After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension. After three years, if the mark is still not in use, the application is automatically denied.
Denial of Application
Appeals are possible to the District Court, but they are rarely done, and even more rarely are they successful.
Is the Mark in Use?
After a Notice of Allowance is issued, the applicant has three years to begin using the mark. If the mark is in use and a statement of use has not been filed, one must be filed at this time. If the mark is not in use, then an extension must be filed every six months for up to three years.
Each Six Months if the Mark Is Not Yet in Use
After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension.
Three Year Deadline
After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension. After three years, if the mark is still not in use, the application is automatically denied.
Statement of Use
Before final approval can take place, a statement of use must be filed. If one was not already filed before the Notice of Allowance was issued, then it must be filed at this time.
Statement of Use
The applicant can file a Statement of Use at any time during the examination process. Click to see a flowchart of the Statement of Use process.
Final Approval
Once the publication is complete and there is no opposition, it takes an additional six weeks for the registration to issue.
