Filing a trademark application in the U.S. - how does it work?

You have spoken to a competent lawyer and checked the availability of your trademark.  You want to file a trademark application with the U.S. Patent & Trademark Office (USPTO).  What is the process?

Before filing

A U.S. trademark application is filed directly with the USPTO by an applicant or the applicant's attorney.  Trademark applications are public record and therefore all information contained in your application is available to the public.  As such, you may choose to list a business address or P.O. box rather than your home address.  You may also wish to secure internet names consistent with your trademark, such as domain names and social networking handles, before filing.

There is no blanket ownership of a trademark; a trademark must apply to specific goods and/or services.  Moreover, the USPTO prefers to have the descriptions of goods and services worded in a specific way.  Trademark Examining Attorneys will compare an applicant’s wording of goods and services with their own USPTO Trademark ID Manual and, among other things, will issue objections for wording that they find to be insufficient or vague.

Once you have filed your trademark application, you cannot change the mark contained in that application.  For example, if you now want to add a word or a design to the mark, you will need to file a separate application.  Similarly, once you file the application, you may not add any goods or services to the application.  You may later delete or narrow goods and services in the application, though once you do so, removed goods and/or services cannot be reinstated.

Government fees

The goods and services to which trademarks apply fall into international classes.  For example, cosmetics are designated as Class 3 and clothes are designated as Class 25.  U.S. trademark application filing fees are determined by the number of classes that are contained in a trademark application.  At present, the fee for electronic government filing fee for a U.S. application is $275 per class.  Depending on the nature of your trademark filing and its progress, there may be other government fees, such as Statement of Use fees and extension fees. 

Filing the application

All information in the application must be complete, honest, and accurate; once registered, faulty information in the application could serve as grounds for the future cancellation of your registration.  Upon receiving your application, the USPTO will assign it to one of its Examining Attorneys, a process which takes about four to five months.  The assigned Examining Attorney then examines the application and either approves it or issues an Office Action (a request for further information or an objection).  If an Office Action issues, the applicant has six months within which to respond or the application will be deemed abandoned.  If the application is approved, it is published for opposition for a period of thirty days.  If no opposition (or extension of time to oppose) is filed within that opposition period, the mark is “allowed.”  Once allowed, the applicant must show use of the mark on the goods or services in interstate commerce before the mark may register.  Once the applicant files and the USPTO accepts proof of use of the trademark, a registration certificate is issued.  From date of application to registration, if no Office Action is issued and depending on when the applicant filed evidence of use, the application process can take about eighteen to thirty-six months.

Use of your trademark

As implied above, you must show use of the trademark contained in the application in interstate commerce before it can achieve registration.  If use is never shown, then the application will not register.  When using your mark before or during the application process, the use of the "TM" or "SM" symbol next to your mark is appropriate, specifically to the right-hand side of your mark and preferably in superscript.  Once the mark registers - and only once it registers - you may use the Ⓡ symbol, again to the right-hand side of the mark and preferably in superscript.  For more information regarding the use of trademark symbols, see my blog on that topic.

Cautionary note: solicitations

Once your application is filed, especially if you do not have an attorney to represent you, various companies will send you documentation which may appear to be official.  Many of these mailings are solicitations which are not issued by the USPTO.  If you have an attorney, they will receive all official USPTO correspondence; therefore, if you receive any correspondence regarding your application, bring it to your attorney’s attention.  If you are not represented by counsel, be sure to verify that any such mailings are authentic before responding or making any kind of payment.

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