TRADEMARK BASICS
A TM is any word, symbol, design or combination of those that:
- Identifies the source of goods and
- Distinguishes them from the goods of another party
Trademark
- Indicates the source of services
Service Mark
- Indicates the source of services
APPLICATION WORKFLOW AND TIMELINE
- Applicant conducts clearance search
- USPTO data base. uspto.gov/searchtrademarks
- The internet: Option for searching for common law use
- Applicant files new trademark application
- TEAS
- uspto.gov/TEAS
- USPTO readies application for review
- Occurs 1-2 weeks after application filed
- Issued filing receipt
- Examining attorney reviews application
- Occurs 3-4 months after application filed
- Takes action within 7 days of beginning review
- Applicant responds to office action: READ YOUR OFFICE ACTION AND MAKE SURE YOU UNDERSTAND ALL THE TERMS THERE.
- Required within 6 months of issuance
- Examining attorney reviews response: IT CAN TAKE LONGER
- Takes action within 21 days of receipt.
- Applicant responds to final office action
- Required within 6 months of issuance of office action
- Response called a “request of consideration”
- OPTION: Appeal final decision to the TM Trial and Appeal Board (TTAB)
- Examining attorney reviews request for reconsideration
- Takes action within 21 days of receipt
- OPTION: TTAB decides appeal: Renders decision in about 10 months.
- Examining attorney approves application for publication
- Occurs at any point in the review process
- USPTO publishes application
- Trademark appears in Official Gazette
- Begins 30 days opposition period: ANY PERSON CAN OPPOSE YOUR APPLICATION BE APPROVED WITH USPTO
- USPTO moves application forward
- If application base on use in commerce: WILL MOVE ON TO REGISTRATION! ISSUES REGISTRATION CERTIFICATE.
- If application based on intent to use: ISSUES NOTICE OF ALLOWANCE
- Applicant files STATEMENT OF USE (SOU)
- Required within 6 months of issuance of NOA
- OPTION: May file and extension request, if TM isn’t yet in use in commerce.
- OPTION: Applicant files extension request:
- Required within 6 months of issuance of NOA
- Allowed to file up to 5 requests
- SOU due by end of last extension request period
- Examining attorney reviews SOU
- Takes action within 21 days of receipt
REMINDERS
- Check you appl regularly: 6 months to respond to things. CHECK EVERY 3 MONTHS.
- If miss a deadline: Examining attorney will abandon your appl.
ABANDONED APPLICATION
- Ends USPTO’s review of application
- OPTION: File a “Petition to revive”: A FEE WILL BE APPLIED