Trademarks are used to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of those goods. While trademark protection may be acquired under common law by use of the mark such that it acquires distinctiveness in the minds of consumers, seeking federal registration for a mark where possible is usually a more sound business decision.

The United States trademark laws impose strict filing requirements and deadlines which if not adhered to can result in an application becoming abandoned. From analyzing the potential for liability, to responding to objections from an examiner – the overall process can take anywhere from 10 months to 18 months and can be more involved than most people expect. The USPTO recommends consulting an intellectual property attorney who can guide you through the process.

Trademark Application Process

1. Determining Availability and Risks

Determining whether a mark is available for use is a wise step to take before filing an application for federal trademark registration. This can be accomplished by conducting a trademark search. The search results typically reveal marks which are similar or confusingly similar, thereby increasing awareness of the risks of proceeding with use of the mark  and providing insight into whether a trademark application may be approved my an examiner. A trademark search consists of a review of various trademark databases and commercial resources where searching can be limited by jurisdiction – U.S. only searches or multi-market searches.

 2. Filing a Trademark Application 

After considering the results of a trademark search, if an application for federal registration is still in the picture the next step is to determine which type of application should be filed.

 Section 1(a) – Trademark application based on use in commerce:

Section 1(a) applications are filed when a mark is currently being used in commerce in connection with the goods/services for which protection is sought. The applicant is required to indicate the date that such use began and provide a specimen showing how the mark is being used in connection with the goods/services.

Section 1(b) – Trademark application based on Intent to use in commerce:

Section 1(b) applications are filed when a mark is not yet being used in commerce but the mark owner has a bona-fide intent to use the mark in commerce in the near future. With section 1(b) applications, registration will not be granted until the mark owner begins using the mark in commerce and a statement alleging use is filed with the USPTO.

 Section 44(d) – Trademark application based on foreign application:

Section 44(d) applications are filed when the mark owner has filed an application in a foreign country and wishes to file a U.S. application claiming priority from the foreign application’s filing date. 44(d) applications must be filed within 6 months of the foreign filing date.

Section 44(e) – Trademark application based on foreign registration:

Section 44(e) applications are filed when the mark owner has a mark that is registered in a foreign country and wishes to file a U.S. application based on the foreign registration.

Section 66(a) – Trademark application based on the Madrid Protocol:

Section 66(a) applications are filed via the Madrid Protocol where the mark owner seeks protection in multiple foreign countries.

 3. The Examination Process

Once an application is filed with the USPTO, it takes up to 3 months for that application to be assigned to an examiner for review. Upon review, the examiner may either approve the application for publication or issue a letter (referred to as an office action) stating any grounds for refusal or corrections required in the application. If the examiner issues an office action, the applicant is given six months to respond. If a response is not provided within the 6 month period the application becomes abandoned. If the response is timely, the examiner reviews the response and either approves the application or issues a final refusal.

 4. Publication for Opposition

If the examiner has no objections to the application, the examiner will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO, where any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file an opposition to registration.

 5. Issuance

If no opposition is filed within the 30 day period and the application is a section 1(a) application (use), the examiner will issue a certificate of registration. If the application is a section 1(b) (intent to use) application the examiner will issue a notice of allowance. For section 1(b) applications the applicant will have 6 months after the date of issuance of the notice of allowance to either begin using the mark in commerce with the associated goods/services and to file a statement alleging use with the USPTO, or file a request for a 6 month extension of time to begin using the mark. After a statement alleging use is filed and approved by an examiner a certificate of registration is issued.