Filing Your Trademark Application: What Happens Next?

Let's say you are a small business owner, entrepreneur, or startup filing its first trademark application. You have completed all the application steps and paid the required application fees. Congratulations! Now, you may be wondering, "What happens next?"

Your brand is vitally important to your business. Otherwise, you wouldn't have put much effort into protecting your trademarks through registration with the U.S. Patent and Trademark Office (USPTO). You want to have exclusive rights to your brand name or business name. So, what happens after you file your application? The following list will help you understand the registration process after filing:

• What happens when my application arrives at the USPTO?
• What are examiners doing while I'm waiting?
• What if somebody objects?
• What if the USPTO examiner rejects my application?
• Are there other types of intellectual property concerns?
• How do I hire an intellectual property attorney?

See Registering a Trademark if you still need to file your registration.

What happens when my application arrives at the USPTO?

• The United States Patent and Trademark Office gives each application a number upon receipt.
• A USPTO clerk reviews the materials you have sent to ensure you have included all the required items like the filing fee, logo drawings, and specimen of use.
• The USPTO then classifies the application. Your goods or services determine the classification. The application is then put into one of the 45 appropriate categories according to its classification system.
• The clerk sends you a receipt acknowledging that the USPTO received your filing.
• You might not hear anything from the USPTO for up to eight months. The waiting time is posted on their website, so you will know what batch of applications they are working on. The entire application process for most trademark applications takes 13- 18 months.

What are examiners doing while I'm waiting?

• A trained examiner—a lawyer working for the USPTO—reviews your application and decides if it is complete and consistent.
• The examiner determines if your mark qualifies for trademark registration.
• The examiner determines if your mark contains common or generic words. These are not allowed under trademark law, so you cannot claim it as your own.
• If the examiner determines the application has problems, they will ask you to provide corrections. You will receive a take action notice with a deadline for you to respond. Failure to respond will result in your application's rejection.
• If your application is sufficient, the USPTO's Official Gazette will publish a Notice of Opposition.
• The USPTO waits to see whether anybody objects to your application.
• If nobody objects within the allowed time and you've already used the mark, the USPTO will register the mark. If you did not start using the mark, the application will be registered once you establish its use. This is done through a Statement of Use form.

What if somebody objects?

If someone objects, you will receive an office action. An office action is a written communication from the USPTO that raises objections and requires clarifications or amendments to the application.

If somebody objects to your mark, you'll need to hire a trademark lawyer to help you get the mark registered. The lawyer can also help you resolve a dispute with the entity that objected to your application.

What if the USPTO examiner rejects my application?

• An examining lawyer points out problems relating to the form of the application, such as how precisely you have described the mark or whether your drawings are adequate. The form will instruct you about what your response must contain.
• The rejection form will tell you how long you have to respond. If you don't respond on time, the USPTO will conclude that you have abandoned the application. At this point, 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 with your trademark lawyer.
• The USPTO may then rule on the application and reject it. Your attorney can help you decide whether to appeal this ruling and where you should present your appeal. You can appeal to the Trademark Trial and Appeal Board (TTAB) or file an action in federal court. Your lawyer will explain the advantages and disadvantages of each option and tell you what to expect. If your first appeal is unsuccessful, your lawyer can advise you of your options.
• You can register your mark on another list, the Supplemental Register. This is available if the USPTO denied you based on a merely descriptive mark. After five years, you can ask to have the mark moved to the Principal Register. You can also request to have the mark moved if you can establish that it has acquired a secondary meaning. When people see it or hear it, they think of your product.

Are there other types of intellectual property concerns?

Once you have your registered trademark, you may realize you need other IP protection forms. It's a good practice to have employees, partners, or investors sign a non-disclosure agreement if you are going to discuss trade secrets with them. This helps keep your ideas and products out of the public domain.

Artists, authors, and software engineers may want copyright protection.

If you are an inventor, you may need patent protection. You must complete a patent application with the USPTO to receive patent protection. As a first-time patent applicant, there are many things to remember. There are many types of patents. You may need a plant patent, utility patent, or design patent. A utility patent grant is for inventors of new and useful processes, machines, articles of manufactures, or compositions of matter. The patent application process is confusing. Find a patent attorney for legal assistance. They can help with the application filing and the patent search and explain the additional fees associated with the process.

How do I hire an intellectual property attorney?

Intellectual property rights can be quite complex. Some people need legal representation when filing for intellectual property protection, like trademark protection. Contact an intellectual property attorney for legal advice about your application, trade secrets, or copyright protection.

Visit FindLaw's Trademarks section for more articles and helpful resources about trademark rights.