Trademark Registration

What to expect when applying for a federal trademark registration

• Decision to Proceed with Application - Based on search results, or otherwise, it may be determined to proceed with a U.S. trademark application. The application is based on actual use or a good faith intent to use the trademark in commerce. Additionally, applications can be based on a trademark application or registration in a foreign country. This is referred to as your filing basis.
• Application Filed - An actual use application is filed with the U.S. Patent & Trademark Office (USPTO) if your mark is already in use. Alternatively, an intent-to-use application is filed if you have a good faith intent to use your mark in the future, but have not yet begun to use it. Both application types typically have fees of $924 in most cases (an attorney fee of $599 including the search, and a USPTO fee of $325 per class of goods/services). An intent-to-use application will require the subsequent filing of a Statement of Use once the mark is used in interstate commerce (subsequent filing for Statement of Use is $275 generally, including the required USPTO fee). Alternatively, if the mark is still not in use yet, a request for an extension of time to file a Statement of Use is submitted.
• Examiner Review - Each trademark application submitted to the USPTO is assigned to an Examiner and is reviewed within approximately 4 to 5 months. The Examiner may approve the application, refuse the application with minor issues, or refuse the application with substantive issues. Once the application is approved by the Examiner, the mark will be published for opposition in the Trademark Gazette approximately 3 to 4 months later. A response to an Examiner’s refusal with minor issues is approximately $175 in most cases. A response to an Examiner’s refusal with substantive issues is approximately $375 in most cases. In some cases, multiple responses are required.
• Published for Opposition - Applications, once approved by the Examiner, are published for opposition in the Trademark Gazette. A potential opposer has 30 days in which to oppose the application or to file for an extension of time within which to oppose. Oppositions are generally not common. However, when they occur, it is treated similarly to litigation at hourly rates. Often, a proper search conducted prior to filing will provide assurances (but not a guarantee) about the likelihood of receiving an opposition.
• Registration of Mark - Once the Trademark Examining Attorney has approved the application and there has been no opposition filed, the mark will become registered. (Start to finish registration can occur in 10 to 11 months.)
• Post Registration Task - Once an applicant has received a federal registration for a trademark, proper care and quality control of the mark should be exercised to protect the mark.
• Requirements to Maintain a Federal Registration - Various affidavits and fees are required to be filed with the USPTO to maintain registration. A combined declaration of use and incontestability is filed between the 5th and 6th years after registration (generally $300 USPTO fee & $275 attorney fee). A combined declaration of use and application for renewal is filed between the 9th & 10th years after registration of the mark, and between each subsequent 9th and 10th year anniversaries (generally $500 USPTO fee, and $275 attorney fee).
  
  The points noted above are not intended as specific legal advice. The points merely provide the reader with an overview, introduction, and example process steps to the federal trademark application process. The process can vary per application.