The charts below provide a basic explanation of the trademark application process. A definition of “intent to use” vs. “use in commerce” is defined below.
Our office typically recommends that a client applies for a word/standard mark vs. a design/stylized mark to provide a broader range of protection. However, if a mark is descriptive, a stylized logo may be best. If an applicant decides to file for a word mark and discovers that an application exists for a similar mark for somewhat related goods, a design application may be the safer route to go.
Intent to use vs. presently used in commerce-what type of application should I choose?
This depends on whether you are presently using the mark in commerce or not.
What does it mean for something to be “used in commerce”?
Goods-The product has been sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels. If certain requirements are met, a brochure or online point-of-sale display may suffice as a specimen of use for goods if certain requirements are met (e.g., means for ordering). Advertising and marketing materials are generally unacceptable specimens for goods.
Services-The services have been provided within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.
An application will be filed as an intent to use application or a use in commerce application. For a mark to obtain a registration, the applicant must prove that the mark is being used in commerce. However, if you’d like to reserve your name prior to using the mark in commerce, you may still proceed with filing an intent to use application.
Use in commerce:
If the mark is already being used in commerce, proof of the use will be filed at the time of the initial application. If the mark is not presently being used in commerce, you may still file for a trademark and reserve the mark. However, the registration will not be issued until the statement of use is filed.
Intent to use:
If you plan to use the mark in commerce in the future, an “intent to use” application must be filed, which puts the public on notice that the applicant intends to use such mark. If a “notice of allowance” is issued by the USPTO, the registration will be issued once the applicant provides proof that the mark is being used in commerce. Once a notice of allowance is issued, the applicant has six months from the issue date of the Notice of Allowance (NOA) either to file a Statement of Use (SOU) or apply for an extension of time to file an SOU (an “Extension Request”). An Extension Request is a sworn statement that the applicant still has a bona fide intention to use the mark in commerce, but needs additional time actually to use the mark. An extension request is not included in the trademark application package, but may be filed by our office for an additional fee.
You may continue to file Extension Requests every six (6) months for up to a total of five (5) extensions of time. You must use the mark in commerce and file an SOU within three years (36 months) of the NOA issuance date. For more information, see TMEP Section 1108.01.
Note: The six-month periods are based solely on the issuance date of the NOA, and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension.
Types of trademark searches:
Preliminary trademark search-A preliminary trademark search is also called a “knock-out” search and is used to determine whether there are any obvious issues or conflicts with the mark you intend to register. We will search the USPTO database to determine if any identical marks for any goods or services similar to yours are listed in the USPTO database. The preliminary search determines whether there are any obvious conflicts and does not confirm that your mark is available. Rather, the search determines whether the applicant should proceed with a comprehensive trademark search. We typically retrieve results for a preliminary search within 7 days.
Comprehensive trademark search-A comprehensive trademark search consists of searching state trademark databases, company database names, domain name databases, publications, and some international databases. We will also search different variations of your mark to determine any additional conflicts. A formal legal opinion will be drafted explaining any potential risks you may pursue if you decide to register the mark. This search is very extensive and takes approximately 2 weeks to perform.
What happens if my mark receives an office action?
An office action from the USPTO is a request to provide more information to assist the examining attorney in determining whether the mark is appropriate for registration.
What is a non-substantive trademark Office Action?
Non-substantive trademark Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark and do not require significant legal research or argument. Non-substantive Office Actions generally cover formalities that may be resolved quickly and inexpensively.
proposed amendment to the identification of goods/services or the classification
request for more information on the mark (e.g., whether mark has a meaning in the industry or foreign language)
proposed revision to the description of a stylized special form mark
requested disclaimer of a portion of the trademark
What is a substantive trademark office action?
Substantive trademark Office Actions typically include a refusal to register the trademark based on certain grounds. Responses to substantive Office Action generally require greater effort and cost than those of non-substantive Office Action responses.
Likelihood of confusion refusal
Mere descriptiveness refusals
Dispute re: disclaimer requirement
Any office Action that raises issues which require a greater effort in response
As a further example, the examining attorney may be offering registration on the Supplemental Register which may require a Statement of Use.
What happens when a mark is approved for publication?
If a mark is approved for publication, the examining attorney at the USPTO completed review of your application and determined that there are no issues that would bar the registration of your trademark. The mark will be scheduled to be published in the USPTO official gazette. Once published, third parties will have 30 days to file an opposition claiming that they will be damaged by the registration of your mark. If an opposition is not filed, the mark will proceed to the final stages of registration and a notice of allowance will be issued. If your mark was filed as an intent to use in commerce, you will be required to file a statement of use (proof that the mark is being used in commerce) prior to the issuance of the registration.
What is a “notice of allowance”?
A notice of allowance is a confirmation from the USPTO that a particular mark has survived the opposition period following publication in the Official USPTO Gazette. It does not mean the mark has been registered. If the mark was filed as an intent to use, the USPTO will issue a notice of allowance about eight weeks after the date the mark was published.
The applicant has six months from the date of the notice of allowance to either:
1) file a statement of use (proof that the mark is being used in commerce) or
2) Request a six month extension of time to file a statement of use.
An applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. An applicant may file more than one six month extension request, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within.
Why am I receiving emails and letters from third parties telling me I have to pay more money?!
Correspondence from third parties:
Once your application is submitted, the applicant’s information becomes public record. You may receive emails from third parties requesting that you pay additional funds to secure your trademark. Please note that these emails are sales emails from third parties. Any official correspondence from the USPTO will be directed to our office.