Trademark Application

When you are ready to file a trademark application you may complete one of the USPTO’s electronic Initial Application Forms, which ask for both mandatory and optional identifying information about yourself and your trademark search.

Be mindful that all submitted information will become publicly available through the USPTO database, so be prepared to receive some unwanted phone calls or emails if you do not use an attorney to file for you.

Designating Goods and Services

When you file a trademark application you must designate one or more products or services with which to associate your trademark. The USPTO maintains a master list comprising thousands of products and services, categorizes them into 45 classes, and charges you an application filing fee per class. For example, if your trademark application designates the products t-shirts, shorts, and shoes these would all fall under class 025 (clothing, footwear, headgear) and you would only be required to pay for one class. If, however, your application designates as products t-shirts and shorts, shoes, and includes embroidering services you would have to pay for both class 025 (clothing, footwear, headgear) and class 040 (treatment of materials), effectively doubling your application cost.

Once you have generated a list of goods and services you will be asked to designate each one as “1a” or “1b”. A 1a (“in use”) designation means that you are currently using the trademark for that purpose and can provide a “specimen” or documentation that proves you are currently using the mark for the applied for purpose. A 1b (“intent to use”) designation means that you intend to use the trademark for that purpose but cannot at the time of filing provide a specimen for proof of use. For any application designating one or more 1b products or services, proof of use will not be required until later in the application process, but this will incur additional filing costs down the road.

Examiner Review

After you have filed your trademark application it will be reviewed by a USPTO examiner to determine the strength and availability of the mark. Usually, this will occur approximately 3-4 months after filing the application. If the examiner does not find any concerns with your application, then the next step will be to publish the application for opposition. Otherwise the Examiner will issue an official letter, usually called an office action, requiring clarification or changes.

Publication

After the USPTO examiner reviews your application it will be published for public review. Publishing your mark puts your potential competitors on notice and provides a 30-day window for them to either oppose the trademark registration of your trademark or request an extension of time to file.

If a potential competitor observes your published trademark registration in the Official Gazette they may submit an official opposition to your application. This is often considered the best opportunity to proactively defend a potentially competing trademark registration because it is usually simpler to stop an infringing mark before it becomes official rather than after. However, oppositions, which are heard by the Trademark Trial and Appeal Board (TTAB), tend to conclude with one of 3 main outcomes:

  • The opposition succeeds and the trademark registration is wholly or partially rejected;
  • The opposition fails and the trademark proceeds towards registration; or
  • The parties settle on an agreement such that either the opposition or the trademark application is withdrawn.

Although oppositions are uncommon they need to be treated very seriously by both the Applicant and the Opposer.

Proof of Commercial Use

If your application survives the opposition period the USPTO will provide you a “Notice of Allowance” that promises registration so long as you timely provide proof that you are properly using the trademark for the applied for purpose.

If you have previously provided proof of commercial use than your application will automatically progress to trademark registration with no further action required on your part. Otherwise, you must upload a specimen, or evidence, that you are now using your trademark for the purpose(s) applied for. Providing proper specimens for proof of use is a very nuanced process requiring strict adherence to the following guidelines:

For goods or products

  • Showing the mark on the product itself;
  • Showing the mark on the product’s packaging; or
  • Showing the mark on a product display that includes the product and a price.
    • NOTE: Advertising materials are NOT accepted as proof of use for goods or products

Specimens for services

  • Showing use of the mark on materials used to sell the service;
  • Showing use of the mark on materials used to render the service; or
  • Showing use of the mark on materials used to advertise the service.

Registration and Maintenance

With some exceptions, a registered trademark will last indefinitely so long as the USPTO maintenance (or renewal) fees are paid and requirements met:

  • Between the 5th and 6th years following the trademark’s registration date;
  • Between the 9th and 10th years following the trademark’s registration; and
  • Every 10 years thereafter.

To renew your application at the 5/6-year deadline you will need to provide a “Declaration of Use and/or Excusable Nonuse” under Section 8 of the Lanham Act, which tells the USPTO that you have used your trademark continuously for the last five years or had a valid reason not to. If you fail to file a Section 8 affidavit within the deadline, a grace period can be granted to permit a late filing.

To renew your application at the 9/10-year deadline you will need to provide another Section 8 Declaration as well as a Section 9 renewal application. Because these deadlines coincide, the USPTO offers a combined Section 8 and 9 form that can be filed.

Incontestability

As early as 5 years after registration of your trademark you may be eligible to acquire a status of “incontestability”, which can be obtained by filing a Section 15 affidavit to demonstrate all the necessary requirements have been met. Because a Section 15 may not be filed any earlier than the 5/6 year renewal deadline, the USPTO offers a combined form for simultaneously submitting both a Section 8 and a Section 15 affidavit.