By Richard Stim
After filing for a federal trademark, you will receive an electronic filing receipt that explains that you should not expect to hear anything about your application for approximately three months. If you have not heard anything in three and a half months, it is wise to call and inquire as to the status of your application. There are three ways to do this:
Learn more about trademark searching.
You will likely receive some communication from the USPTO within three to six months. If there is a problem with your application, you will receive what’s called an “action letter.” This is a letter from your examiner explaining what the problems are. Most problems can be resolved with a phone call to the examiner.
Learn about trademark basics in order to respond to an examiner.
When the examiner approves your application for publication, you will receive a Notice of Publication in the mail. Your mark will then be published online in the Official Gazette. For 30 days following publication, anyone may oppose your registration. Only 3% of all published marks are opposed, so it is very unlikely you will run into trouble.
Once your mark has made it through the 30-day publication period, and you are filing on an actual use basis, you will receive a Certificate of Registration. The USPTO sometimes has a difficult time moving applications through this long process. As a result, it may take a year or more to process your application.
If you filed on an intent-to-use basis, your mark will not be placed on the trademark register until you file an additional document with the USPTO when you put it into actual use. This form, available on the TEAS system, is called “Statement of Use/Amendment to Allege Use for Intent-to-Use Application.” It tells the USPTO the date you started using the mark and completes the registration process. You must also provide a specimen at that time, showing how you are using the mark.
The chances are good that you will be communicating with the USPTO after you have filed your application. Few applications sail through completely unscathed.
You are required to be diligent in pursuing your application. If you are expecting some action from the USPTO (the ball is in their court) and more than six months have elapsed without your hearing from them, immediately check the TARR system or call the USPTO Status Line (the TRAM Automated System, described above). If you discover a problem, bring it to the USPTO’s attention. If you fail to respond in a timely manner to a request from a USPTO examining attorney, your application may be considered abandoned. If that happens, you may petition the Commissioner for Trademarks within 60 days to reactivate your application.
If the examiner wants you to change your application, such as claiming a different description of services or goods, there is usually some room for negotiation.
An examiner with a brief question might call you and then issue and mail you an examiner’s amendment. This is a form on which the examiner records in handwriting a phone conversation or meeting with the applicant. Read the amendment carefully to make sure it matches your understanding of the conversation. If you disagree, or don’t understand the amendment, first call the examiner, and then, if necessary, write the examiner a letter with your concerns, explaining your point of view on the communication.
Learn more about filing a trademark for a blog.