What Happens Next, After You File a Federal Trademark Application?
You've just taken the very important and wise step to protect your brand by having submitted your federal trademark application to the United States Patent and Trademark Office (USPTO). Congratulations! But what happens next? The trademark registration process can feel complex, overwhelming, and confusing, especially for first-time applicants. Here's a step-by-step guide to help you understand what to expect after filing your application.
Common Misconceptions
Before we dive into the actual process and timelines, it is an important starting point to first dispel some common misconceptions that non-legally trained applicants may have about the process.
First of all, when you submit your application, you have not "registered your trademark." The Application is the first step in a technical process. Only if your application is approved at every stage of the process and matures to registration do you attain a trademark registration.
Second - the subsequent phases of the process are ones where only a licensed lawyer may offer you advice. All too often applicants will use a cheap, "do it yourself" filing service that has a website and promises to file a "trademark" for a few hundred dollars. Such services are typically not licensed attorneys, and their services cease upon filing of the application at the USPTO. Since they are not attorneys, they cannot represent you before the USPTO. Thus, later in the process when problems arise, these services cannot help you! In this respect, the old adage "you get what you pay for" becomes a very expensive headache for many.
Third - there is usually no way to expedite your application. The USPTO process to attain a trademark registration takes a very long time. (some countries, like Canada, take even longer) Currently the estimated timeline is about 14.3 months from the date that the application is filed. That timeline applies to anyone and everyone. There are only specific and limited instances where a party may petition to the Director to try and make their application "special" so as to attain somewhat quicker processing.
1. Application Receipt and Assigning a Serial Number
Once your trademark application is filed with the USPTO, a serial number will be assigned to it. You'll receive an official filing receipt by email that contains this number, acting as a confirmation that your application has been successfully submitted. Keep it handy—this number will allow you to track the status of your application as it moves through the process.
Note that if you are planning to apply to the Amazon Brand Registry, the serial number from the USPTO application will be an important piece of information to apply at Amazon. Generally, the Amazon Brand Registry process goes much quicker and smoother if you have an attorney of record representing your pending application.
2. Waiting for the Application to be Assigned to an Examiner
After filing, it typically will be several months before you hear from the USPTO again. Currently, it takes approximately 6-9 months of waiting, before the application is assigned to a USPTO examiner attorney.
It is important to note that before the application is assigned to an examiner, you may get notification from the USPTO that design codes have been assigned (if you are submitting a design logo for registration). That is perfectly normal, and does not need a response (unless you feel the design codes are not accurate). Again - for design codes, it is typically advisable to consult with an experienced trademark attorney.
Warning! After you file your application, you undoubtedly will be subjected to mail, phone and/or email solicitation by various scam companies claiming you need to pay money to effect your registration. For more information on this topic, check out one of our other blog articles - https://www.iveticlaw.com/beware-of-trademark-scams-a-guide-for-new-applicants
3. Examination by the USPTO Examiner Attorney
After your application is assigned to a USPTO Examiner, they will look at the application to determine if there are any problems or deficiencies with the same. The USPTO examiner's methodology is governed by, among other things, the Trademark Manual of Examining Procedure.
As part of the process, the Examiner's Attorney will check to ensure that your application and your proposed trademark meet all legal requirements. They will likewise check to ensure that there are not any pre-existing federal registrations or prior filed trademark applications that conflict with your proposed trademark. They will also check to ensure that your description of the mark, and the goods and/or services is appropriate and in compliance with the rules.
If the Examiner Attorney finds no issues, they will approve the application for the next phase of the process. If the Examiner Attorney raises any defects or problems with the application, they will issue a non-final refusal in a letter called an "office action." That office action will be served on the applicant's email address. The applicant will get 3 months to address those problems, or the application is deemed abandoned, and is dead.
Thus, it is very important to respond appropriately to any office action that is issued. Typically, this is the stage of the process where the assistance of an experienced trademark attorney is of essential importance to maximize the chances of a successful application.
If you need more time, there is only one opportunity to seek another 3 months, but that must be done on time, and an additional fee will be required.
4. Publication in the Official Gazette
If your application successfully moves beyond the examination phase to the next phase, it will eventually receive a Notice of Publication. This will advise on what date the application will be published in the Official Gazette to permit interested third-parties to file formal oppositions to the application.
Interested third-parties have 30 days from the date of publication to formally file and institute an opposition proceeding. To do so they have to file a legal document (a Notice of Opposition) and pay a fee.
In the event an opposition is filed, a legal proceeding commences before the Trademark Trial and Appeal Board (TTAB). Such an opposition can take months or years to conclude.
If no one files a third-party opposition, then the application moves on to the next phase.
5. Registration or Notice of Allowance
After a successful period of publication with no opposition, the application will either receive a Notice of Allowance, OR it will enter a waiting period for a registration certificate..
- Use-Based Applications
If you filed a Use-Based Application (indicating you're already using the trademark in commerce), the USPTO will move ahead to register the mark. You'll receive a Certificate of Registration, showing your trademark is now federally protected. It is worth noting that you will not get your Certificate of Registration immediately. Rather, there will be a period when you are, in essence, just waiting. Also important, the USPTO does not issue paper Certificates (you will get an electronic/digital certificate). If you wish to get a paper Certificate, you will need to order and pay for one after Registration.
- Intent-to-Use Applications
For Intent-to-Use Applications (indicating you plan to use the trademark in commerce), you'll receive a Notice of Allowance (NOA) instead. This means your trademark is approved, but you must provide proof of use before the registration is finalized. You'll need to file a Statement of Use within six months of the NOA, though extensions are available. For more information on Notice of Allowances, see our recent blog article - https://www.iveticlaw.com/got-a-notice-of-allowance-on-your-trademark-application-great-but-now-what
Final Thoughts
Navigating the trademark registration process can seem daunting, but understanding what happens after filing can help you stay prepared and confident. From the initial review to registration and ongoing maintenance, each step is designed to ensure your trademark is legally sound and ready to protect your brand.
If you're unsure about your application or how to respond to an Office Action, consulting an experienced trademark attorney can save you time and effort. Proper guidance can make all the difference in securing the protection your brand deserves.
As a reminder, our law firm provides legal services for all stages of the USPTO trademark process. Many of our services are provided on a flat fee basis. Contact us today, no matter what phase of the process you need help with, to see if we can assist you!
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