TRADEMARK APPLICATION PROCESSING
You just filed your trademark. Congrats! Now what?
APPLICATION GOES LIVE
After filing your trademark, your application will go “live” on the trademark database within the next week while it pends review by the trademark office. You can find it on USPTO.gov by running a search on "TESS" under the green quick-links drop down menu.
TRADEMARK OFFICE RESPONDS IN ABOUT FOUR MONTHS
The trademark office will respond to your application in approximately four months. In the mean time, assuming your mark is eventually approved, you are still establishing ownership to your mark now simply by using the mark in commerce and submitting your trademark application.
GOOD NEWS RESPONSE
If the trademark office doesn’t find any other trademarks or live applications in its database that are deemed too confusingly similar to yours, and if there are no other issues with your application, you will be notified that your mark has been approved by the trademark office. If you filed with us, we have likely advised of any risks associated with your mark prior to filing and have professionally filed your application.
Your mark will then be published for opposition for 30 days allowing anyone in the public to contest your application. Contests are usually rare, but may occur if another party believes your application infringes on their existing trademark. Assuming there is no opposition, you will then receive your official trademark registration and certificate within a few months. The total process from filing to receipt of certificate takes about 6 months when all goes smoothly.
APPLICATION ISSUES & OFFICE ACTIONS
If you filed your application with us, we have likely advised of any risks associated with your mark that might result in any of the following responses:
A. Administrative Issues
In some instances, the trademark office may find an administrative issue with your trademark application and will send you an office action. These can include issues with the way you described your goods and services, a problem with the trademark specimen you provided, or simply a clarification question from the trademark office.
Administrative issues such as these are generally easy to fix. If you have not used an attorney to assist with your application yet, this is probably a good time to have an experienced trademark attorney properly amend your application to address the issue. Once the application has been properly amended, your trademark will be published for opposition as described above.
B. Likelihood of Confusion Issues
In other instances, the trademark office may find that your mark is too confusingly similar to an existing mark in the trademark database and will send you an office action rejecting your application. You will be notified which mark(s) are causing you conflicts and you will be given an opportunity to respond and appeal the rejection. Here, you will most likely need an experienced trademark attorney to assist with your response.
C. Descriptiveness Issues
Not all marks are trademarkable. A trademark that merely describes the goods and services you provide may be rejected by the trademark office for being merely descriptive or generic. For example, “Creative Coach & Co.” for a creative coaching company could be rejected for being descriptive. If your mark is found to be descriptive by the trademark office, you will receive an office action rejecting your application and you will be given an opportunity to respond and appeal the rejection.
In your response, you may argue that your mark is not descriptive by showing distinction between your trademark and the goods and services you provide. You will likely need an experienced trademark attorney to assist with your response.
If you are unable to overcome the descriptiveness rejection, you may be able to move your application to the “supplemental registry” while you build brand association. Here, if you continue to use your mark in commerce for five years, the trademark office may find that your mark has achieved sufficient distinctiveness to the consuming public and allow you to then move your mark to the principal registry for formal trademark registration.
This article is for informational purposes only and is not legal advice.