By Linda Tancs
Use the following six steps in the U.S. trademark (or service mark) application process as a reference guide for your next filing:
1. Upon receipt by the Trademark Office, the application will receive a filing date and enter pre-examination processing, during which the application data will be entered into the Trademark Office system.
2. The application will be forwarded to an Examining Attorney in the Trademark Office in approximately 6 months (more or less, depending on the staffing of the Office at the time). The Examiner will review the application for compliance with the Trademark Act. Notwithstanding any legal conclusion that the mark is registrable, the application is ultimately subject to a determination by the Examiner whether he or she believes that the mark can be registered. If the Examiner refuses registration of the proposed mark, a communication will be sent to the correspondent listed in the application requesting a response to the Examiner’s conclusions within a 6-month period, during which time a response should be filed unless the application will be abandoned. If the application is not refused, or any objections to it are resolved, then the application will be approved for publication for opposition.
3. All trademark and service mark applications are published in the Trademark Official Gazette. During the 30 days following publication of the application, anyone who believes that they may be harmed by registration of the mark may file a proceeding at the Trademark Trial and Appeal Board (TTAB) to oppose registration of the mark.
4. After the mark has been published in the Gazette, and if no opposition has been filed, then the application continues to be pending until the mark is actually used in interstate commerce. Trademark applications are based on either (i) actual use of the mark in commerce; or (ii) a bona fide intention to use the mark in commerce.
5. For applications based on a bona fide intention to use the mark in commerce, the Trademark Office will, upon publication without opposition, issue a Notice of Allowance. The Notice of Allowance gives the applicant 6 months to begin using the mark in commerce, at which time a Statement of Use is filed. It is possible to request an extension of time to file a Statement of Use. Up to 5 extensions can be granted. Each extension, if accepted by the Trademark Office, will last for a 6-month period calculated as of the issue date of the Notice of Allowance. Once the Statement of Use is filed (including a specimen showing use of the mark, such as labels or tags for goods or brochures, pamphlets or other marketing materials for services), it will be examined by the Examiner to ensure that the materials submitted comply with the Trademark Act. If no objection is lodged, a Certificate of Registration will issue for the mark. Applications based on actual use of the mark (as opposed to an application based on a bona fide intent to use the mark) are not subject to a Notice of Allowance and a Statement of Use (unless the application is converted to an intent-to-use application) because the required specimen of use of the mark is filed with the application. Once published for opposition, use-based marks proceed to registration is there is no opposition lodged against the mark.
6. After successful registration of a mark, there is a possibility that a party objecting to its registration will file an action at the TTAB to have the mark cancelled. A mark is vulnerable to attack during the application process through an opposition proceeding of a third party (as noted above) or again after registration through a cancellation proceeding. Provided that a mark is not cancelled, its registration will last 10 years, at which time the mark can be renewed for an additional 10-year term (and subsequent 10 year terms thereafter) so long as the mark is in use. During the registration of a mark, it is necessary in most cases to file certain affidavits stating that the mark is still being used. Be mindful of due dates on your calendar system. The Trademark Office does send some courtesy email reminders of due dates under some circumstances but is not liable for any errors or omissions in that regard.