The Trademark Application Process

Completing the trademark application might seem like an end. You’ve performed research and have settled on a strong mark that will serve your business and its customers. Perhaps you’ve even consulted with a trademark attorney to ensure the strength of your application.

In reality, the application commences a months-long process that could include various obstacles along the way. Given the many benefits of trademark registration, the effort will prove worthwhile.

The Trademark Application Process

What is on the trademark application?

See the main article: What Do You Need To Complete the U.S. Trademark Application Form?

The trademark application is relatively short, but it requires precise information. Providing vague information, or omitting certain fields, can significantly delay the application process.

It is best to understand the application requirements before the time comes to complete it. You will need to know or provide:

  • Which form you will fill out, TEAS or TEAS Plus
  • The actual owner of the mark
  • The class of goods or services under which the mark falls
  • A copy of the mark, in .jpg form only, if you are filing a logo

Other basic information is also required, as is the processing fee. Having everything, including payment method, ready before you start filling out the application will ensure that everything is in order.

What happens after I file the application?

See the main article: Trademark Application is Filed: Now What?

Hitting the submit button on your trademark application might seem like the end, but the process has only just begun. Now comes time for the review period, which can take four to six months.

If all goes smoothly, your next step will be publication in the Official Gazette. That is the last big step before trademark registration.

You can, however, hit obstacles along the way. The USPTO might find something wrong with your application, in which case you’ll receive an Office Action or other correspondence. Your response determines how quickly and smoothly your application proceeds.

What happens if my application is abandoned?

See the main article: What Can You Do If Your Trademark Application Is Abandoned?

If the USPTO issues correspondence and you fail to respond, they might deem your application abandoned. This sounds perilous, but it does happen from time to time. If you take the proper steps you can recover and resume the application process.

The key is a prompt response to the notice of abandonment. Depending on the reason for your application abandonment, you might have to provide the USPTO with explanations, additional information, and fees.

What is an office action?

See the main article: What Is An Office Action?

If the USPTO notices any errors or issues with your trademark application, you will receive an Office Action. This correspondence outlines the nature of the infraction, which can range from a technical error to a mark that is not eligible for trademark protection.

Once the USPTO issues the Office Action, your application is on hold. You have six months to submit your response. Failure to do so can lead to application abandonment.

Office Actions can require complex responses that a non-lawyer will have difficulty handling. If you filed your application without an attorney’s assistance and receive an Office Action, it is critical to consult with one. The alternative could be the cancellation of your trademark application.

Complete list of Office Actions

See the main article: The Complete List of USPTO Office Actions

For any number of reasons, the USPTO could issue an Office Action in response to your trademark application. Some of these actions are more severe than others, while others can be avoided completely if you hire an attorney beforehand.

The USPTO issues various other correspondence, including the requirement for disclaimers, which require prompt responses from the applicant. Understanding these actions will make it easier to form a proper response.

Mistakes to avoid when registering a trademark

See the main article: 7 Mistakes to Avoid When Registering a Trademark

People make mistakes all the time when filling out the trademark application. That’s why applications filed by attorneys are 50 percent more likely to be approved. The linked article outlines the most common mistakes people make when filing, so you won’t have to repeat them.

How to protect your trademark

See the main article: How To Protect Your Registered Trademark

Registering your trademark is only the first step. Through the years you must actively protect the mark, so that it continues to protect your business. Failing to protect your trademark can weaken your rights.

Steps such as setting up online alerts and signing up for a trademark watch service are great steps towards protection. You can also hire an attorney from the start. An attorney familiar with your trademark filing can better help you in cases of infringement.

Finally, you want to take action against any entity that threatens the uniqueness of your mark. Even small cases are worth pursuing to some degree, since they assert your rights. Failing to pursue infringement cases, however small, can set a dangerous precedent.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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