Once you've completed the trademark paperwork, you might wonder what the next steps are and what you can expect. Filing a trademark can seem like a maze of legal jargon and complex processes, but understanding the journey can make it much less daunting. This post will guide you through the entire process, from the moment you submit your application to the point where your trademark becomes a registered asset.
1. After Submission
Right after you submit your trademark application, here’s what typically happens:
- Application Processing: Your application enters the queue for examination. This can take anywhere from several weeks to a few months, depending on the backlog.
- Receipt of Filing: You will receive an email or postal receipt acknowledging the application filing, which includes your application number. Keep this number handy as you’ll need it for future references.
- Priority Date: This is the date your application was received by the trademark office, which will be your priority date for the trademark. This date is critical in case of any conflicts or disputes with other marks.
2. Examination Phase
The examination phase involves a detailed scrutiny of your application by the Trademark Examiner:
- Examiner’s Review: The examiner will check for:
- Correctness of information
- Compliance with filing requirements
- Clarity, distinctiveness, and registrability of the mark
- Office Actions: If there are issues or objections with your application, the examiner will issue an Office Action. This document outlines what needs to be addressed or corrected. Common issues include:
- Trademark conflicts with existing marks
- Incorrectly categorized goods or services
- Generic or merely descriptive use of the mark
Responding to Office Actions
If you receive an Office Action:
- Read it carefully and understand the issues.
- Seek legal advice if necessary to craft a proper response.
- File a response within the stipulated timeframe, usually within three to six months.
💡 Note: If you fail to respond, your application will be considered abandoned.
3. Publication for Opposition
Once your application passes the examination phase:
- Publication: Your mark is published in the Official Trademark Gazette or the relevant publication for opposition. This step gives third parties an opportunity to oppose your mark if they believe it conflicts with their interests or rights.
- Opposition Period: Typically, this period lasts for 30 to 60 days, during which any interested party can file an opposition. If there’s no opposition or if oppositions fail, you move forward.
If an Opposition is Filed
If someone opposes your trademark:
- You will be notified and can defend your mark.
- The matter can either be resolved through negotiation or proceed to a legal hearing.
4. Registration
If no opposition is filed, or if you successfully defend against opposition:
- Certificate of Registration: You will receive a Certificate of Registration. This marks the official registration of your trademark, giving you exclusive rights to use the mark on the goods or services specified in your registration.
5. Post-Registration
Even after registration, several steps and considerations come into play:
- Maintenance: Trademarks require maintenance through periodic filings to keep the registration active. This includes:
- Filing a Section 8 Declaration of Use (in the U.S.) between the 5th and 6th year after registration to prove continued use.
- Filing a Section 9 Renewal Application every ten years to renew the registration.
- Use in Commerce: Ensure your trademark is actively used in commerce for the goods/services listed. Lack of use can lead to cancellation.
- Monitoring: Continuously monitor for potential infringements or similar marks filed by others. You can set up watch services or conduct periodic searches.
In the journey of registering a trademark, understanding each phase is crucial for efficient navigation through the system. From the submission of your application to the ongoing maintenance post-registration, each step has its nuances. Keeping track of deadlines, understanding the importance of responding to official communications, and being proactive about potential opposition or infringement can make a significant difference in securing and maintaining your trademark rights.
What happens if I miss the response deadline for an Office Action?
+
If you miss the response deadline, your application will be abandoned. However, there might be options to revive it if you act promptly with good cause.
Can I change my goods/services after the application is filed?
+
Yes, you can, but you’ll need to do so via an amendment during the examination process. Post-registration changes might require a new application.
What does a “notice of allowance” mean in the U.S.?
+
A “notice of allowance” indicates that your trademark application has been approved for registration, but you must file a Statement of Use or Extension Request before the trademark is officially registered.
