TRADEMARK REGISTRATION PROCESS

 The United States Patent and Trademark Office ("USPTO") registration process for a trademark can be extremely complex. While with the right trademark the process can be seamless, often times there are obstacles along the way. An experienced trademark attorney can identify potential threats and pitfalls prior to filing a trademark application with the USPTO. Here is a flowchart to help you navigate your way through the process. A detailed step by step analysis is provided after the flowchart. Please note TTAB refers to the USPTO's Trademark Trial and Appeal Board; green refers to positive occurrences; yellow refers to any USPTO or TTAB action; pink refers to obstacles; and red  refers to a terminable event.  

Guide:

 

1. Client requests a trademark search be performed and trademark application  be filed for his or her trademark with the United States Patent and Trademark Office ("USPTO").

 

2. Attorney performs trademark search to determine if there are any threats to registration or with use of the trademark. Attorney drafts a memorandum detailing any potential threats to registration or with use of the trademark.

 

3.  Client reviews the memorandum, discusses the findings with the attorney, and if client consents, attorney will prepare the trademark application.

 

4. Attorney files the trademark application.

 

5.  Within three to four months after filing the application, an Examining Attorney with the USPTO will be assigned the application. The examining attorney will review the trademark for any potential confusingly similar USPTO registered mark, descriptiveness of the mark, and  other issues. Within twenty days of receiving the application, the Examining Attorney will either approve the trademark for publication in the Gazette or initially refuse registration.

 

6A. Approved for Publication.  If the Examining Attorney does not find any potential confusingly similar marks, he or she will approve the trademark for publication in the Gazette. The same is true if an Office Action is issued and a Response is accepted or the applicant appeals an Office Action with the TTAB, and wins the appeal.  Once the trademark is published, within thirty days of publication, any interested party may oppose registration of the trademark by filing a Notice of Opposition or file a 90-day extension to file a Notice of Opposition.

 

6B. If the Examining Attorney finds a potential confusingly similar trademark,  believes the trademark is descriptive, or finds any other issues, an Office Action will be issued and the trademark will be initially refused. At this point, the applicant has two choices: 1. Submit a response arguing against the initial refusal, or 2. Abandon the application. In the event a Response is submitted, it will either be accepted by the Examining Attorney and the trademark is approved for publication, or another Office Action is sent. At this point, Applicant can either 1. Abandon the application,  2. Submit another Response, or 3. File an appeal with the TTAB. If another Response is submitted and denied, the application either has to be abandoned or an appeal must be filed with the TTAB by the applicant. If an appeal is filed with the TTAB, the applicant will have a hearing with the Examining Attorney in front of the TTAB. If the Applicant wins, the trademark is approved for publication. If the Applicant loses, the applicantion is abandoned.

 

7A.  If neither a Notice of Opposition or Extension to File a Notice of Opposition are filed, the trademark will be registered.

 

7B. If a Notice of Opposition is filed, whether initially or within a 90-day extension, the applicant has two choices: 1. File an Answer to the Notice of Opposition, or 2. Abandon the application, which can only be done with the consent of the Opposer. In the event the applicant submits an answer, a mini-trial with the TTAB will be initiated and registration, if possible, delayed by over a year. If the applicant wins, the trademark will be registered. If the applicant loses, the trademark application will be abandoned.

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