What Happens After a Trademark Application is Submitted

If you're thinking about registering your trademark, then you're probably wondering what happens after your application is submitted. This blog post reviews the 4 steps that a trademark application goes through after it is submitted to the United States Patent and Trademark Office ("USPTO")

4 Steps After a Trademark Application is Submitted:

1. Assignment to an Examining Attorney

2. Examination of the Application

3. Publication

4. Registration

1. Assignment to an Examining Attorney

After an application is submitted to the USPTO it remains in a pending status until it is assigned to an Examining Attorney. The length of the pending status fluctuates depending on the number of trademark applications filed and can range from 3-8 months.

Examining Attorneys are experienced trademark attorneys and their role is to review your trademark application to make sure it meets all the legal requirements and that your trademark is registrable. Examining Attorney's are adversarial legal opponents because their role is to protect registered trademarks.

2. Examination of Your Application

Next, the Examining Attorney will review your trademark application. The Examining Attorney will search the USPTO registered database and pending trademark applications to determine if your trademark conflicts with any registered or pending trademarks. The Examining Attorney also reviews your trademark application for compliance with the Lanham Act for the purpose of determining registrability in the United States. Lastly, the Examining Attorney reviews the evidence you submitted with your application.

If the Examining Attorney determines your application meets all the legal requirements for registration on the the Principal Register and there are no substantive issues, such as no conflicting trademarks, the Examining Attorney will approve your trademark for publication.

If the examining attorney determines your trademark isn't registrable, the Examining Attorney will issue and office action. An office action is an official letter explaining why registration is being refused and includes suggestions for fixing the application, if available.

3. Publication

If the Examining Attorney finds no issues with your application or if you successfully respond to the Examining Attorney's office action, then your application will be approved for publication in the Trademark Official Gazette.

Publication begins a 30-day period during which any member of the public who thinks they’ll be harmed by the registration of your trademark may oppose it. They may file a Notice of Opposition, which starts a legal proceeding with the Trademark Trial and Appeal Board (TTAB) about your trademark.

If no one opposes your trademark during the publication period, your application proceeds to the next stage of the registration process. It still hasn’t registered. It can take three to four months from the time your trademark publishes to when you receive official notification that your trademark has either registered or moved to the next stage.

4. Registration

The final step your trademark application goes through is registration. If your application is based on use in commerce, then your trademark will register.

If your application is based on an intent to use the trademark in commerce, your trademark will not register yet. Instead, we will issue you a Notice of Allowance, which means you must submit a Statement of Use (SOU) by the deadline. An SOU must include a specimen showing how you use your trademark in commerce. Once you submit an acceptable SOU, your trademark will register.