In-Use Trademark Applications: What Happens After You File?

Trademark Law0 comments

Congratulations!

You’ve officially:

-Conducted a knockout search

-Had an attorney conduct a comprehensive trademark search

-Been using your trademark in commerce (for goods or services)

-And decided to move forward and file your in-use trademark application with the United States Patent and Trademark Office (USPTO)

…Now what?

Well, you hunker down for a bit of a wait.

As of this post’s publication date, you’re looking at a minimum of 10 months for an “in use” application to be registered.

Assuming, of course, there are no hiccups in the examination process.

Read on to learn more about the process while you wait.

**But before we dive in – this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Overview of the in-use trademark application process

I always find it helpful to zoom out and look at the big picture before we get into the details.

So here’s a 10-foot view of the trademark application process:

  1. Application Submission

After conducting an extensive search and deciding to proceed with applying for a trademark, you’ll submit an application through the USPTO, with information about your mark, like:

  • The class of goods or services (there are 45 of them) you intend to use it for
  • What type of mark it is (word mark or design mark)
  • A specimen showing the use of your mark
  • When you started using the mark in commerce

And other information as needed.

  1. Application Assigned to Examining Attorney

After submitting your application, an Examining Attorney at the USPTO will review it and determine whether or not your application meets their requirements.

  • Option A: it meets requirements 

And you breathe a sigh of relief.

Your mark will now be moved to the publication phase. 

  • Option B: it doesn’t meet requirements 

And you’ve got some work to do.

You’ll receive an Office Action, which you have 3 months to address (more on Office Actions in the next section).

  1. Publication Phase

If the examining attorney finds no issues with your application (or the issues are suitably addressed after an Office Action is received), you move to the publication phase.

This is a 30-day period when your mark is “published” in the online Trademark Official Gazette.

Any member of the public who thinks they’ll be harmed by the registration of your trademark may oppose it.

Pretty simple when it’s laid out like that.

But what about when things get complicated?

Examining Attorneys and Office Actions

It can feel like a lot is riding on the opinion of the Examining Attorney your trademark application gets assigned to.

And it kind of is. 

The Examining Attorney will:

Evaluate whether or not your mark meets all of the criteria for registration. 

This includes evaluating how likely it is that another party can prove they have prior rights to the same mark in commerce based on an existing registration, as well as ensuring there are no other aspects of the mark that make it unregistrable. 

Review any specimens submitted with your application. 

Specimens are pieces of evidence, such as packaging labels or product tags attached to goods, that show the use of your mark in commerce. 

Issue Office Actions as needed.

An Office Action is official correspondence from the Examining Attorney reviewing your application that outlines any issue they see. 

The issue may be non-substantive (meaning a procedural issue exists that can be corrected) or substantive (meaning there are issues with the trademark itself).

Common substantive reasons for an Office Action to issue include:

  • Your mark is geographically descriptive
  • Your mark is primarily merely a surname
  • Your mark is generic or merely descriptive
  • Your mark fails to function as a trademark (i.e., taken as a whole, it’s functional)
  • Your mark includes matter protected by statute or convention (e.g., the Olympics)
  • A likelihood of confusion exists (your mark resembles an existing registered mark)
  • Your mark includes the name, portrait or signature of any living individual or deceased US president, without consent
  • Your mark includes any flag, coat of arms or other insignia of the United States, any state or municipality, or foreign nation

If an Office Action is issued, you have 3 months to respond. 

If you’re able to make effective arguments to overcome the refusal, your mark will move on to the publication phase. 

If not, you will receive a Final Office Action – this indicates that registration will be refused and provides you one more chance to try and overcome the refusal. 

If you’re not successful on that last chance, registration will be refused. 

Sorry for the doom and gloom.

Let’s move on to what happens when your trademark application gets the Examining Attorney’s approval.

The Publication Phase and how it works

Your application has made it past the Examining Attorney and entered the publication phase!

To review, this is the 30-day period when your mark is “published” in the online Trademark Official Gazette so that it may be opposed by any member of the public who thinks they’ll be harmed by the registration of your trademark.

Let’s consider 2 scenarios:

  1. Your application IS opposed

In which case, you have 30 days to file an answer, and the Trademark Trial and Appeal Board (TTAB) will set a trial calendar with deadlines. 

**Pro Tip: If you receive a Notice of Opposition, it’s wise to retain counsel ASAP to ensure you’re complying with legal requirements and do not miss any deadlines.**

  1. Your application is NOT opposed 

This is it – your application will move on to the registration phase. 

It currently takes about 2 months between when a mark survives the publication phase and receipt of a registration certificate from the USPTO.

But the most stressful part is behind you!

Note: As of May 24, 2022, the USPTO no longer automatically issues paper copies of trademark registration certificates. 

If you want the version with the fancy gold seal (and not just a PDF file), you have to affirmatively request a copy – and pay for it – if you filed your application after May 24, 2022.

Officially graduate from in-use trademark application to federally registered trademark

Registering your trademark can look really daunting at first.

But knowing what to expect and understanding how registration will help ensure your trademark is valid and protectable can alleviate the overwhelm.

As can retaining a trademark attorney for your team.

Get to “graduation day” with less stress – book your trademark consultation today. 

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.