- Hi everyone.
I'm attorney Aiden Durham with 180 Law Co. in Colorado.
And welcome back to All Up In Yo' Business.
(uplifting music)
On this episode of All Up In Yo' Business,
we're gonna go through the trademark registration process.
I'm gonna break down the whole process to you guys
and explain each step that's involved along the way
if you're trying to get a registered trademark
with the United States Patent and Trademark Office.
But first, don't forget to like, subscribe
and share and check the description
for links to additional information and resources.
You can download my free Introduction to Trademarks Guide.
There's a link down there for that.
You can also check out my all-inclusive
trademark registration package
if you need help with your trademark,
or my online DIY trademark course.
All that info is available in the description.
All right, so if there's one thing that I can say for sure
when it comes to the trademark registration process
is that it's not short.
There are a lot of different steps and phases
that your trademark application has to go through
before it will actually be registered with the USPTO.
So what I'm gonna do in this video
is break down each step of the process
and explain what each step means
and how it might impact your trademark application.
It's important to remember that the process
is gonna look a little different for every application.
While every trademark application
does go through the same process,
the exact timing and how it all plays out
is really going to depend on your exact trademark
and what happens with your application during the process.
So the trademark registration process, generally speaking,
is broken down into about five or six
different phases or steps, depending on the filing basis.
First, the trademark application is filed.
Then your application is assigned to an examining attorney.
Then the examining attorney reviews your application
to determine if it meets all the requirements
and if there are any grounds for refusal.
Then your trademark will be published for opposition.
Then if your trademark application was filed
on a 1(b) intent-to-use basis,
the examining attorney will issue a Notice of Allowance
and you'll file a Statement of Use.
Then there'll be one final review
and your trademark will be registered.
So now let's back it up a little
and talk about each of those steps.
The trademark registration process begins with, what else?
Submitting the application of course.
You would submit your trademark application online
at uspto.gov and pay the associated filing fees.
After you submit the application,
you're going to wait, and wait,
and wait a little longer.
It typically takes about three months
before anybody at the USPTO
even sets eyes on your application.
So it's perfectly common,
and in fact, expected to not hear really anything back
or get any kind of updates, not receive any correspondence
from the USPTO for about three months
following when you submit the application.
After about three months,
the USPTO will assign an examining attorney
to your application.
This examining attorney is gonna be the person
who is evaluating your application.
They're going to make sure your trademark
is available for registration
and that your application meets all the requirements,
and that your trademark is eligible to be registered.
If there are any problems with your application
or if the examining attorney has grounds
to refuse your trademark registration,
then the examining attorney will issue an office action.
This typically happens about a month after
the examining attorney is assigned to your application,
or about four months after you submit the application.
Now these office actions can come in many different forms
and address a wide variety of issues.
Some issues that might be brought up
in an office action are minor,
like a disclaimer requirement,
or if the examining attorney needs some clarification
on your goods and services,
or potentially to amend the description
of your trademark drawing, something like that.
But sometimes there are bigger issues
brought up in an office action,
like a likelihood of confusion,
which means that the examining attorney
has found another trademark
that might be confusingly similar to your trademark.
Whatever the reason for the office action,
you'll be given six months
from the date of the office action to file a response.
If the office action is regarding the refusal
to register your trademark,
such as the likelihood of confusion issue,
then that response is your opportunity
to overcome that refusal
and try to convince the examining attorney
that your trademark should be registered.
If you don't file a response to the office action
within that six-month timeframe,
then your trademark application will become abandoned
due to your failure to respond to the office action.
If you do file a response to the office action
and the examining attorney doesn't accept your response,
for example, if it's a likelihood of confusion issue,
the examining attorney may still disagree
with your arguments and may maintain their position
that there is still a likelihood of confusion
and your trademark shouldn't be registered.
If that happens, the examining attorney
will issue another office action.
Typically, this one's going to be a final office action.
You'll then have another six months
to either respond to that final office action
and try again to get the refusal withdrawn,
or you can file an appeal through the TTAB
or Trademark Trial and Appeal Board.
Or again, if you don't file a response
to that final office action within that six-month timeframe
or file an appeal, then your trademark will become abandoned
due to failure to respond to the final office action.
However, let's say your response was accepted
or the examining attorney didn't issue an office action.
If the examining attorney didn't issue an office action,
then the application will be approved for publication.
This usually happens about four to five months
after you've submitted the application.
If the examining attorney did issue an office action
and you responded and all of those issues got resolved,
then your trademark will be approved for publication
about one to two months after you filed that response.
So what do I mean when I say
it's going to be approved for publication?
Well, part of the trademark registration process
is having the trademark published for opposition
in the Trademark Official Gazette.
This is like a fancy trademark newspaper
where you get to see all the exciting goings on
and news regarding new trademark applications.
It's very exciting.
The purpose of this is to give the general public,
the rest of us, an opportunity
to oppose the trademark registration for whatever reason,
whether we believe it might infringe on our rights
or whatever the case may be.
This is our opportunity to let the USPTO know
that we don't think this trademark should be registered.
But don't worry.
This really should be taken as a good thing.
If your trademark is approved for publication,
that means the USPTO hasn't found any reason
to deny your trademark registration.
They're just putting it out there for the public
to see if the general public has any reason
to deny your registration.
So once you resolve any office action issues,
your trademark will be approved for publication
in the Trademark Official Gazette.
And then it will be actually published
about a month after that approval.
The trademark will be published for 30 days,
meaning that the general public has 30 days
to oppose your trademark registration.
However, it is possible for someone to request
an extension of time to file an opposition.
But even in that case,
they still have to request that extension
within that 30-day publication time.
Now, I know it can sound kind of scary
hearing that your trademark is going to be published
for anyone to oppose, but in my experience at least,
it's extremely rare that a trademark is actually opposed.
I've filed over 100 trademark applications
and I've only had one application
actually receive an opposition.
It's not like we're all whipping out
the Official Gazette every morning
while we enjoy our nice cup of coffee.
Most of us, frankly,
don't know to look at the Official Gazette
to see if we need to be opposing trademark registrations.
But of course, it still does certainly happen.
If you receive an opposition to your trademark application,
then it's a really good idea
to consult with a trademark attorney
because now you're involved in an administrative proceeding
with the Trademark Trial and Appeal Board.
And it's important that you properly follow procedure
in addressing and responding to the opposition.
But for most of us, that's not going to be a problem.
Most of us aren't going to have to deal with oppositions
after the publication phase.
The rest of the trademark registration process
is going to depend on the filing basis
of your trademark application.
If you filed your trademark application
on a 1(a) current use basis,
then the publication phase is pretty much
the last step in the process.
If you get through that 30-day publication phase
and there are no oppositions, then your trademark
will typically be officially registered with the USPTO
about three months after publication ends.
Now, the examining attorney does do
a kind of final review before it's actually registered.
And sometimes other issues can come up in that timeframe.
Sometimes the examining attorney
notices something that they initially missed,
or some other problem might have come up.
So it can happen that other issues arise
later in the process.
But for most of us, most of the time that doesn't happen
and your trademark will be registered
about three months after it's published for opposition.
If you filed your trademark application
on a 1(b) intent-to-use basis however,
there's another super important step that comes up here
after the trademark is published.
After the trademark is published for opposition,
and of course, assuming nobody files an opposition,
the examining attorney will issue a Notice of Allowance.
This Notice of Allowance will say something like,
no opposition was filed for this published application.
The issue date of this Notice of Allowance
establishes the due date for filing a Statement of Use
or requesting an extension.
So in other words, this Notice of Allowance
starts the clock ticking,
and you have six months from the date
of that Notice of Allowance
to file a Statement of Use or request an extension.
So what is a Statement of Use?
The Statement of Use is used to show the USPTO
that you are now using your trademark in commerce.
As I've mentioned in previous videos,
you have to be actually using the trademark in commerce,
meaning you're using it in connection
with the sale of your goods or services,
before it can be registered with the USPTO.
A trademark isn't a trademark until it becomes a trademark,
meaning that the USPTO won't register it
until they see that you're actually using it as a trademark.
So you'll have six months from the date of that
Notice of Allowance to submit a Statement of Use,
along with a specimen demonstrating
how you're using the trademark
in connection with your goods or services.
Typically this will be something like a label or a tag
or a display that's used in association with your goods
that you're selling, or it can be an advertisement,
or a brochure or something like
a website screenshot advertising your services.
Whatever it is, the point is that the specimen
needs to clearly demonstrate to the USPTO
the context in which your trademark is being used
in commerce in connection with the goods or services
that you identified on your application.
And you also have to include on the Statement of Use
the dates that you first started using
your trademark in commerce.
If you haven't started using your trademark in commerce
by that six-month deadline
after you received the Notice of Allowance,
then you can request an extension
to file the Statement of Use.
Again, you still need to request that extension
within that six-month timeframe,
but the extension will give you another six months
to file the Statement of Use.
And you can keep requesting extensions if needed.
You can request up to five extensions,
or about three years' additional time
before you need to file that Statement of Use.
If you don't file a Statement of Use
or request an extension within that six-month timeframe,
then your trademark will become abandoned.
But assuming you do file a Statement of Use,
then the examining attorney will review the Statement of Use
to make sure that the specimen is acceptable.
And if it is acceptable,
then your trademark will be officially registered,
typically within about a month
after your Statement of Use is accepted.
So, as you can tell,
the entire process is going to look different
depending on your trademark application,
your filing basis, and what issues might come up
after you filed your application.
On the short end, if there are no office actions
and no oppositions and you filed your application
on a 1(a) current use basis,
the entire process is typically gonna take
at least eight to nine months.
But as you can tell from this whole breakdown,
it's not like we, the applicant, really need to do much
during that eight to nine months.
We're kind of just sitting back,
waiting for the USPTO to go through their process.
But at a bare minimum,
the trademark registration process from start to finish
is gonna take about eight to nine months.
But on the other end of the spectrum,
it can take well over a year or two,
or it can go into three or four or longer years,
all depending on what happens.
I've had trademark applications
that have taken over three years from start to finish.
This is typically more common
in a 1(b) intent-to-use basis,
if we're requesting multiple extensions
or something like that, or if we have office action issues
that we have to go back and forth on,
'cause responding to an office action
and then responding to a final office action,
all of that can easily take a year
because you get six months to respond each time.
Now, of course, there are ways
to kind of speed up the process in some situations.
You can petition to get an examining attorney
assigned faster than that three-month timeframe.
That's normally only going to be available
in special circumstances though,
like if you're in the middle of
a trademark infringement issue.
So to summarize, the trademark registration process
typically consists of five, maybe six, kind of seven steps
depending on the filing basis.
You file the application.
Application is assigned to an examining attorney
who reviews the application.
Sometimes we respond to office actions.
The trademark is published for opposition.
Then we might file a Statement of Use
for a 1(b) intent-to-use filing basis.
And then seven, the trademark is registered.
That's all for this episode, folks.
As you can probably tell,
the trademark registration process can be very complex
and difficult and it is vital that you file and respond
to everything on time,
otherwise your trademark application will be abandoned.
That's why it's always best to work with
an experienced trademark attorney
if you're trying to get a registered trademark
with the USPTO.
Check the description to learn more about Brand Bombshell,
which is my signature all-inclusive
trademark registration package,
or Brandish, my online DIY trademark course
that shows you exactly how to submit a trademark application
without a lawyer.
Thank you all so much for watching.
I'm Aiden Durham and I'll see you next time.
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