An applicant has recorded a trademark with the United States Patent and Trademark Office and now questions what the next steps are en route to trademark registration. This is not only a common question asked by applicants who file for a trademark registration on their own, but it is also a common question of clients who ask their trademark lawyers and attorneys what kind of timeframe they are looking at until they have secured a federal trademark registration.

There are multiple steps within the 12 to 18 month process of acquiring a trademark registration on the federal registrar with the United States Patent and Trademark Office. Once filed, a trademark is entered into the online system and assigned to an examining attorney who reviews the trademark application. The examining attorney is responsible for doing a search to determine whether there are any confusingly similar trademarks that are filed and/or registered within the United States Patent and Trademark Office Database. The examining attorney utilizes search tools to identify such registrations. In particular, the examining attorney is trying to identify marks that appear the same, sound the same phonetically, and/or have some sort of similar component within the mark. The examining attorney will also look at the goods or services within which the trademark applicant is attempting to register the trademark. Any marks that are identified that have already been filed and/or registered will be cited by the examining attorney in what is known as a USPTO Office Action. The examining attorney will cite what is known as Section 2(d), which is the appropriate trademark section relating to a likelihood of confusion. The applicant and/or the applicant’s attorney will be given six months to respond to the initial refusal in the Office Action due to the likelihood of confusion. It is within this stage that individual applicants are often required to retain a trademark attorney who has experience and knowledge of the trademark laws and rules related to the trademark registration. Should the trademark attorney and/or the applicant be able to overcome the initial refusal issued by the examining attorney in the Office Action, the trademark will proceed along the registration process.

An initial refusal due to a likelihood of confusion is not the only item within an Office Action that requires a response by the applicant in order to keep the trademark moving through the process. An examining attorney may request that a different specimen be provided. A specimen is something evidencing the fact that the mark has been used in interstate commerce in connection with the goods or services within the trademark application. Oftentimes, an applicant submits a specimen that may be admissible with a service mark but not with a trademark, and vice versa. The USPTO Office Action provides six months for the applicant to correct the application and provide a satisfactory specimen. Again, there are specific rules and regulations that apply to what specimens are acceptable, how to submit the specimen online or in paper form, and other requirements of which an individual applicant may not be aware.

A USPTO Office Action may also require clarifying information such as a modification of the drawing to match the specimen, a disclaimer of merely descriptive information as part of the mark, submission of a clearer specimen, or some other procedural or administrative matter in order to ensure that the trademark proceeds to registration. Not all applications will be subject to an Office Action, however, it is important to be able to identify what the issue is and respond appropriately in order to keep the trademark live, avoid abandonment due to a failure to respond, and to ensure that the mark proceeds through the trademark registration process.

Once the examining attorney is satisfied that the mark is worthy of registration, the mark is published for opposition in the Official Gazette. This provides public notice to any and all interested parties that the mark will be registered unless somebody opposes the mark and/or seeks declaratory judgment that the mark should not be registered with the USPTO. While the timeframe leading up to being published for opposition varies, once a mark is published for opposition, it is published for 30 days. At the end of the opposition period, the mark will be approved for publication, a notice will be sent to the applicant, and the mark will be registered on the Principal Register, or Supplemental Register, of the United States Patent and Trademark Office.

Applicants need to be aware of this 12 to 18 month process, including the different types of scenarios that may unfold within this process, and be prepared to properly prosecute their application in order to achieve a federal trademark registration. While an individual applicant is permitted to handle this entire process on his or her own, oftentimes a trademark attorney with experience in prosecuting federal trademarks within the USPTO is recommended and advisable. Ultimately, an applicant has invested significant time and expense in order to identify its brand, pursue protection via a trademark registration with the USPTO, and benefit from the mark. An applicant would not want its mark suspended or abandoned due to a failure to respond to a relatively simple office action. Oftentimes, an applicant, with the help of trademark counsel, can avoid refusal and ensure registration faster than an applicant who does not timely prosecute its application.

Brian A. Hall is an attorney and partner of Traverse Legal, PLC, a law firm specializing in complex litigation, intellectual property matters, internet law and trademark registration and prosecution. Speak with a trademark registration attorney today and learn more about the importance of choosing the appropriate trademark registration for your particular mark.

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