Thinking of registering a US trademark? Registrations are issued by the United States Patent and Trademark Office (the “USPTO”). Here’s an overview of the process (timelines are approximate):
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1. Application: You first file an application with the USPTO. You can file on paper or electronically. Most people now file electronically, which lowers the fees you pay. The standard fee for electronic filing is currently $325 for each class of goods or services that you include in your application. You also have the option of filing an application that is based on an existing application or registration in another country. (If you want to file in the US from another country under the Madrid Protocol Treaty, you do that through your own trademark office or the World Intellectual Property Organization, not through the USPTO.)
2. Examination: After about 3 months, a trademark examining attorney (trademark examiner or examining attorney) at the USPTO is assigned to your application. Within a few months after that, he or she reviews your application.
3. Office Actions: If there are any issues with your application (there usually are), the trademark examiner will issue letters, called Office Actions, that refuse all or part of your application and explain the basis for the refusal and how you can attempt to overcome it. You must respond to each Office Action or your application will “go abandoned” and won’t become a registered trademark.
4. Publication for Opposition: If the examination phase is successful and you overcome any objections raised in Office Actions, then your application is “published for opposition.” This is a 30 day period during which others can object to your trademark becoming registered. Your trademark is published in a federal publication that let’s people know what you are trying to register. Owners of other trademarks can (and should) watch for publications to see if there is a conflict with their own marks that the trademark examiner didn’t notice.
5. Allowance: If the publication for opposition phase is successful (no one opposes registration of your trademark or you win the opposition), then your application is “allowed.”
6. Statement of Use: If you didn’t submit evidence of actually using your trademark in commerce in the US at the time you filed your application, you must do so at this state. This is called a Statement of Use or an amendment to allege use. You must file this before the trademark can be registered. If you’re not using your trademark yet, you can extend the deadline for filing this, in six month increments (with a fee for each), for about two years. If you filed your trademark application based on an existing registration in another country (a 44(e) filing basis), or based on the Madrid Protocol (a 66(a) filing basis), you don’t have to show use of your mark in the US before it can be registered.
7. Registration: A month or two after all of the above requirements are met, the paper registration certificate is issued. There is no charge for this.
8. Evidence of Use: In every case (even if you didn’t have to submit a Statement of Use before registration because you filed based on the Madrid Protocol or a foreign registration), you must, between the fifth and sixth year after your US registration issues, file evidence that you are actually using the trademark in the US. This currently costs $100 for each class of goods or services in your application.
9. Section 15: After you have been using a registered mark for five years, you have the option of filing a document to have the mark declared “incontestable.” This currently costs $200 for each class of goods or services in your application, but gives you extra legal rights if a dispute arises (people aren’t allowed to make certain claims to try to defeat your trademark rights).
10. Renewal: Every ten years after the date of US registration, you must renew your registration and file evidence that you are continuing use of the trademark in the US. If you filed your US trademark application under the Madrid Protocol, you must renew your International Registration at WIPO independently of filing a proof of use every 10 years after your US registration issues.