Can you get a Refund if your Application is Denied? (photo credit = Absolutvision @Unsplash.com)

Once I File my Trademark Application, is Registration Guaranteed, and/or Can I get a Refund if it is Not Successful?

All too often, people think that, having filed an application for a US Trademark Registration, they already have attained registration or that the success of their application is guaranteed. Unfortunately, that is not the case, and the mere filing of an application at the USPTO is just the first step in a lengthy process that may take over a year.  The confusion of the public over the trademark application process is fueled in part by the mis-leading marketing of "Do it Yourself" websites that leave one with the impression that they can file "same day" and you attain your trademark registration instantaneously.  This article will help to provide an answer to two of the most often encountered questions that are raised - "is registration guaranteed," and "if registration is not successful, can I get a refund?" 

The short answer to both questions is a "No" - but we shall attempt to explain some of the nuances so that it is easier to see why that is actually the answer. 

Filing a Trademark Application is Just the First Part of the Process

Though filing an application to register a trademark at the Federal level at the USPTO Trademark Office is a commendable achievement and important step for any business, in and of itself it is just the first part in a lengthy process.  After you file your application (regardless if it is filed by an attorney, a "do it yourself" site, or by you personally) the application is assigned a serial number and waits to be assigned to a trademark examining attorney for examination.  It may take several months before your application is assigned (and then examined) by a USPTO examiner attorney.  If the application passes the examination phase, then it is passed onto the publication phase.  If an application does not pass the examination phase, an office action will be issued, and you will have 3 months to address the reasons for refusal, and try to overcome them.  IF you do not file a response, your application dies at that stage.  If you file a response that does not successfully overcome the office action refusal, then you will have 3 months to seek reconsideration and/or file an appeal to the TTAB.  Failure to do either, will result in your trademark application being abandoned (ie. it is unsuccessful). 

At the Publication Phase, your mark and application will be published in the Official Gazette for a 30 day period.  During that 30 day period - any interested 3rd parties can file a legal proceeding (Opposition) to object to the registration of your proposed trademark.  If any such opposition is filed, then you will have to either fight the opposition before the TTAB, or you will abandon the application and it will not register. 

After an application passes the publication phase, and if no one has filed an opposition, then there are 2 options.  If your trademark application was filed on an "in use" basis, then, after several weeks you will finally get a trademark registration certificate and number (only then is your trademark "registered").  If you filed your application on an "intent to use" basis, then you will be issued a Notice of Allowance, which gives you 6 months to prove that you have begun use.  If you need more time, that 6-month period can be extended (for a total of 36 months).  Again, if you successfully confirm use - you will get a registration certificate and number.  If you fail to prove use within the stated period, your application will be abandoned and not mature to registration.

Filing a Trademark Application does not Guarantee a Successful Trademark Registration

As should be clear from the above summary - a trademark application must successfully pass several phases (examination, publication for opposition, and proving use) in order to successfully register.  At examination, an application may fail and be issued a rejection letter (office action) for any of a number of both substantive and non-substantive reasons. Among the substantive reasons are:

• The mark is deemed to conflict with an existing trademark registration
• The mark is deemed to possibly conflict with a prior filed trademark application
• The mark is generic
• The mark fails to function as a trademark
• The mark is ineligible for protection as a trademark

There are also non-substantive reasons for a refusal, and though these are usually able to be more readily and easily "fixed" - if you fail to do so within the statutory 3-month period, the application will be abandoned and not successful.  Non-substantive reasons for refusal can be as simple as requiring a disclaimer, tidying up or clarifying the goods/services, providing a proper domicile address, providing a better specimen, etc.

The examination process is very subjective in nature, and 2 Examiners can (and have) disagreed as to the ability to trademark a certain mark.  The USPTO is comprised of over 750 individual Examiners (many of whom have recently been trained/added) each with their own independent thoughts and opinions. There are also over 7 million registered trademarks at the USPTO. For these reasons, we cannot guarantee how the USPTO will respond to any of your submissions. Our work is intended to try and increase the probability that your mark will be registered and subject to protection. Though we will gladly offer you our opinion based on our professional judgment, we cannot guarantee a specific outcome or result for any matters on which we work on your behalf.   Similarlly, as the legal fees are based on actual work performed, they are not refundable.

Legal Fees and Filing Fees for a Trademark Application are Non-Refundable

The USPTO filing fees are charged by the USPTO Trademark Office at the time of your application being filed.  These filing fees are on a per class basis, and are non-refundable.  The minute that filing fee is paid to the USPTO - it is gone, irrespective of whether or not that application successfully matures to a registration.  Similarly, after an application is filed, the ability to "amend" or "correct" that application becomes very limited.  It is for these reasons that we (as many other professional practitioners) prefer to take steps (like research and analysis) before filing the application, to find out about any issues that may arise, and take steps to maximize the chances for a successful registration.  Our approach is not the same as "do it yourself" websites that focus on speed.  These sites do not care if you succeed in registration or run into problems.  In fact (unless you sign up for their more expensive service with an affiliated law office), these "do it yourself" websites actually cannot represent you before the USPTO in the case of an office action or opposition.  So, their model is based upon blindly filing as many applications as fast as possible.  Statistics published by the USPTO regularly show that more than 50% of self-filers (ie. those that file themselves or with a "do it yourself" service rather than a lawyer) receive office action refusals.

Our approach is to strategize and file after the client is able to make a fully informed decision, knowing of potential risks, and after we have undertaken strategies to maximize the chances of a successful application.  We always therefore recommend a comprehensive search and Clearance Opinion before filing, to determine if there are any pre-existing trademark registration or common-law uses that may pose a problem or conflict (at either the examination or publication phase).   In that manner, our legal services strive to provide value and benefit to our clients.

Conclusion

The trademark application process is a very technical process, where even a simple mistake, or missing a deadline can be quite costly and fatal to the chances for a trademark registration.  Statistically, those that file without the assistance of a trademark practitioner attorney, and those that file via a "do it yourself" website fail even more often than they succeed.  An attorney-led filing not only means you will know of potential problems before you file, it also means that you will have an experienced attorney helping you maximize the chances for a successful registration and representing you all the way through the process. If the success of your trademark application is important to you - an attorney led process is the safest and soundest way to proceed.

Our office is experienced in every phase of the trademark application process, and we regularly assist clients from around the United States, as well as from other countries.  As such we have experience to help you maximize the chances for a successful registration process.  We offer free initial consultations, so if you are considering filing for a trademark, you should feel free to reach out and seek an initial consultation from our firm!

Contact us for a Free Consultation on your Trademark matter!