Tweet

Federal Trademark Application Timeline, Intent to Use Application

Written by: Shannon Moore

Article Overview: A detailed timeline for a Federal trademark application for those applicants that are not currently using their marks.

Federal Trademark Application Timeline, Intent to Use Application

Step 1: File

Assuming you've had all your comprehensive research completed & the name is clear, the first step is to file the application. The application is available online through the USPTO.

Step 2: Receive a Filing Receipt

The day the application is filed, the USPTO will email you a confirmation that the application is received. This receipt includes your serial number, the filing date and a summary of the application.

How Long? Should be same day. If you do NOT receive a filing receipt the same day, contact the USPTO at TEAS@uspto.gov

Step 3: Assigned to Examiner

An examiner is "a USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark." This will be the individual you'll correspond with about your application during the registration process. See this post for further details.

The time periods for the rest of this process are going to vary so the following are approximations...

How Long? About 3 months, though could be sooner or later.

Step 4: Examination Begins

Your examining attorney will review your application & should any issues arise that need to be dealt with will come via email in an Office Action. Office Actions can be comprised of a number of things. Some of the most common issues are a disclaimer is needed, a re-wording of the goods/services description is needed and the mark is refused based on likelihood of confusion, which is why you have comprehensive research done first to ensure that this doesn't happen. See this post for further details.

How Long? Anywhere from 1-3 months seems to be the average length of time it's taking the examining attorneys to send out Office Actions. This can be shorter if the application is filed correctly from the get go.

Step 5: Notice of Publication

Provided that there are no objections from the examining attorney and/or you've responded to their Office Actions satisfactorily, the application then moves to publication. "Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

One important note: This is the BLACKOUT PERIOD - do not file your Amendment to Allege Use/Statement of Use. You'll have to wait until the publication period is over.

How Long? The USPTO states 30 days but I've seen applications that have been published for 2 months.

Step 6: Notice of Allowance Issued

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration."

This is when the clock starts ticking & applicants should be very diligent on keeping things up to date. You'll have 6 months from the date the NOA is MAILED to contact the USPTO with either a Statement of Use or a Request for an Extension of Time (gives you another 6 months to file the Statement of Use).

Step 7: Registration

Once the publication period is over, the mark becomes registered. You'll also be assigned a registration number.

All in all, it could take a year (if there are no issues) to a year & a half (if there are hiccups like Office Actions) to be granted registration for an in use application. However, be rest assured that the USPTO does take note of your pending application. If a filing comes in AFTER your application, they will know that you were first in line.

Related Articles
  What Is Common-Law?
  How Do You Get a Trademark?
  What's the Point of Getting a Federal Trademark?
  How to Register a Trademark
  "What the world really needs is more love and less paperwork."

Article Tags: approximations, attorneys, compliance, comprehensive research, confirmation, confusion, email, length of time, likelihood, objections, office actions, receipt, regulatory requirements, serial number, step 3, teas, time periods, uspto



Related Forum Posts
Facebook applications - ....[quote:36s714h1]The two that we were thinking of were Famous Entrepreneur Quotes and Which famous entrepreneur am I most like? [/quote:36s714h1] So far my own foray into Facebook has been a complete bust, though I expected that from the start. But if I do an Application for my own particular field of interest, such as Your Favorite Sci Fi movie...that might get people going. So Evan when you figure out how to do this please let me know how complicated it is!!
Re: How do you back up your computer? - [quote="Evan":2rtu8bqc]After deciding not to go with BackBlaze because they couldn't back up all of my files within the trial period (what's the point of a trial period of you can't actually try it out??) I have now given Dell a chance. I bought my new Dell laptop about 6 months ago and never initialized the Dell DataSafe Online application - until yesterday afternoon. My favorite thing about it so far is that before you back up it shows you how many files you have in different categories - ie documents, financial information, email files, videos, music, and photos. From there you can set your preferences as to what you want to back up. For me I have a large number of videos, photos, and music on my computer but I deselected them for the backup - To make the backups go more quickly I only chose the documents, financial information, and email files. This might be why my BackBlaze trial backup never completed. It works on the same premise that if you change a file it will recognize the change and only backup those changes. I have a free one year account that came with my Dell and so far I'm happy with it. You may want to consider looking into the program if you haven't found a suitable backup system yet![/quote:2rtu8bqc] Hi Evan, So have you heard of any security problems with Dell's DataSafe Online Application though? And from your experience thus far, would you pay for subscription once your one year of free account expires?
General business value - Typically a general ball park value range can be calculated by figuring 3- 5 times the net earnings. With the 2007 year ending recently, if the top page of the 07 tax return is not available to give you official documentatin of that, you will have to go according to the P & L statements. Just make sure you get something in writing from the seller that states the P & L's will be reflective of the 07 tax returnwhen it is prepared. Either the seller or the buyer can bring a LOI (Letter of Intent) to the table outlining a deposit, refund policy and anything else that will protect them. I suggest having a lawyer draw up a LOI to ensure you are protected fully (as Hap hazzardly put together LOI could cause problems later on).
Re: What would you like to see be invented? - There was a movie called "Timeline." They attempted to make a "3D FAX" and it was a time machine. Well done, very violent and some cool surprises.
Require Info on CAD Fed/Prov Grants for Restaurant Start-up - Hi, Does anyone know of any reliable source where one could apply for Federal/Provincal govt grant funding for a restaurant start-up? Cheers Ron


Share this article with your friends. Fund someone's dream.

Leave a comment below or share on the left and you'll help support entrepreneurs in Africa through our partnership with Kiva. Over $50,000 raised and counting - Please keep sharing! Learn more.

Tweet

Newsletter

Get advice & tips from famous business
owners, new articles by entrepreneur
experts, my latest website updates, &
special sneak peaks at what's to come!

Name:
Email:

Popular Articles

Starting A Set of Books

Why We MUST Reinvent The Wheel

Leading from Authenticity is a Beautiful Thing

Suggestions

Email us your ideas on how to make our
website more valuable! Thank you Sharon
from Toronto Salsa Lessons / Classes for
your suggestions to make the newsletter
look like the website and profile younger
entrepreneurs like Jennifer Lopez.