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Filing Your Trademark Application: What Happens Next?

Your brand is vitally important to your business, otherwise you wouldn't have put so much effort into protecting your trademarks through registration with the U.S. Patent and Trademark Office (USPTO). So what happens after your application is filed? The following list is intended to help you better understand the registration process after its filed. See Registering a Trademark if you haven't yet filed your registration and need some pointers.

What happens when my application arrives at the USPTO?

  • When the USPTO receives an application, it is given a number.
  • A clerk with the USPTO will look through the materials you have sent to make sure that you have included all the required items, like the drawings or the filing fee.
  • The USPTO then will classify the application by determining what goods or services are involved and putting the application into the appropriate category according to its classification system.
  • The clerk will send you a receipt acknowledging that the USPTO has received your filing.
  • You might not hear anything more from the USPTO for three months.

What are they doing while I'm waiting?

  • A trained examiner, a lawyer working for the USPTO, will review your application and decide whether it is complete and consistent.
  • The examiner will decide whether your mark qualifies for registration.
  • The examiner will decide whether your mark contains any common or generic words that you cannot claim as your own.
  • If the examiner determines that the application has any problems, you will be informed so you can provide corrections.
  • If you application is sufficient, it will be published in the USPTO's Official Gazette.
  • The USPTO will wait to see whether anybody objects to your application.
  • If nobody objects within the allowed time and if you are already using the mark, the USPTO will register the mark. If you did not start using the mark, the application will be registered once you establish that you are actually using it.

What if somebody objects?

  • If somebody objects to your mark, you'll have to hire a trademark lawyer to help you get the mark registered or help you resolve a dispute with the entity that objected.

What if the PTO examiner rejects my application?

  • Problems relating to the form of the application, such as how precisely you have described the mark, or whether your drawings are adequate, will be pointed out on a form filled out by the examining lawyer. The form will instruct you about what your response must contain.
  • The rejection form will tell you how much time you will have to respond; if you don't respond on time, the USPTO will conclude that you have abandoned the application and you will have to start over.
  • If the examiner rejects your application for a substantive reason, such as a determination that your mark is confusingly similar to somebody else's or that it is merely descriptive, you will want to consult with your trademark lawyer before responding.
  • A substantive rejection may indicate that there may be an adversarial dispute about your mark. Again, you will want to consult your trademark lawyer about this.
  • The USPTO may then rule on the application and may reject it. Your attorney can help you decide whether to appeal this ruling and where you should present your appeal. An appeal may be presented to the administrative appeals board, referred to as the Trademark Trial and Appeal Board (TTAB), or you can file an action in federal court. Your lawyer will be able to explain the advantages and disadvantages of each option, tell you what is involved (including the estimated time and cost). Your lawyer can also advise you of your options if your first appeal is unsuccessful.
  • If your application is rejected on the basis that it is merely descriptive, you might register your mark on a different list, referred to as the Supplemental Register. After five years you can ask to have the mark moved to the Principal Register. You can also ask to have the mark moved if you can establish that your mark has acquired a secondary meaning, so that when people see it or hear it, they think of your product.

Consider Hiring a Trademark Law Attorney

Trademarks, and intellectual property law in general, can be quite complex. Not everyone needs legal representation when filing for trademark protection, but every situation is different. The last thing a new business needs is to defend against an infringement lawsuit, even if the infringement was unintentional. Make sure you cover all of your bases by contacting a trademark law attorney before you file.

Be sure to check out FindLaw's Trademarks section for more articles and helpful resources.

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