If you’ve gotten this far, congratulations! You have a product or service and you submitted a trademark application. This means that you’ve likely used us or another lawyer to walk you through the difficult process of preparing and submitting your application. But what happens once you file? What should you expect? Do you still need a lawyer? If so, how can you continue to effectively use your lawyer?
First off: the USPTO, the “United States Patent and Trademark Office” is the key player here, for it is this office that will facilitate your application to determine whether or not your application will be approved. Once the USPTO receives your application and concludes that it meets the minimum filing requirements, your application will receive a serial number and be sent to an “examining attorney.” This attorney reviews your documents to confirm that you have complied with all applicable fees, rules and statues. This examination will inspect any specimen or drawing that is included as well as the written application.
Technical or procedural issues in your application may result in an “office action,” which is an official letter in which the examining attorney will explain why your mark cannot be registered. However, if the corrections needed are minor, it is possible that you will be contacted simply via phone or email. Here at Sumsion Business Law, we stand ready to assist you with any corrections or modifications the examining attorney might require of you.
Per the USPTO website, you are expected to monitor the progress of your application at least every six months using their Trademark Status and Document Retrieval System (TSDR). This is important throughout the month’s long process of getting your trademark registered but is especially critical once your application gets sent to the examining attorney, because office actions require you to respond to the USPTO within six months of being issued. Not responding within that time period will result in all your hard work going to waste with your application being declared “abandoned.”
Hopefully (normally a matter of months) the attorney finds nothing wrong with your application, in which case your mark will be published in the weekly USPTO “Official Gazette.” You will be notified of when that publication will occur, and, once published, any opposition to the registration must be filed within 30 days.
This is where things get a bit more complex, and it is absolutely in your best interest to have legal representation. Essentially, what happens next depends on the type of trademark you filed for. Either you get a registration certificate certifying that the mark has been registered, or you will get a notice of allowance, which does not constitute registration.
Say you have your registration, are you home-free? Not quite. Failure to keep your registration “live” is a huge setback because your registration may be canceled, in which case you have to file for a trademark all over again. Maintaining your registration constitutes specific registration maintenance documents.
Our experienced legal team are Trademark attorney’s in Utah are here to make this process as painless as possible. Contact us today to find out how.
The source material for this article came from https://www.uspto.gov/trademarks-getting-started/trademark-process#step6, the USPTO website.