USPTO Trademark Application Overview
Preparing a USPTO trademark application is a critical process in establishing nationwide legal protection of a business owner’s trademark(s). Filing a properly prepared and complete federal trademark application may establish constructive use and immediate nationwide trademark priority rights.
If there are no issues during the trademark prosecution, the federal trademark registration process will typically take anywhere from 8 – 14 months. Issues that can effect the timeline of a registration are: the type of trademark application that is prosecuted; oppositions to the trademark application; potential refusals from the examining attorney. The basic trademark application process involves the completion of a trademark application; the examining attorney with the USPTO will review the application; a potential first refusal of the trademark application followed by a response by the trademark applicant or trademark applicant’s counsel; a potential final refusal followed by a response by the trademark applicant or trademark applicant’s counsel; and appeal of the final refusal; approval of the trademark application; publication for a period of opposition to the trademark; a filing of a statement of use (required with an intent to use application); and finally, certificate of trademark registration.
After the trademark prosecution process is complete and the trademark achieves federal registration on the Principal Register, the trademark registration potentially can last for 10 years, with renewal periods every 5 and 10 year terms. The trademark owner must file various affidavits stating the trademark is still in use in order to keep the trademark registration alive. As long as the trademark registration is still valid and the trademark still serves the function of a trademark, a registration could potentially last forever.
Trademark Registration Procedure and Considerations
After filing the USPTO trademark application, the USPTO examining attorney evaluates the trademark application to determine:
- Whether the trademark functions as a trademark;
- Whether the proposed trademark conflicts with any existing trademarks;
- Whether the trademark application satisfies all technical requirements.
Types of USPTO Trademark Applications
Intent to Use Application
When filing a federal USPTO trademark application, a trademark applicant may file based on an intent to use, or a trademark application based on actual use. If filing based on an intent to use, the trademark application must be based on a bona fide intention to use the trademark in interstate commerce in the foreseeable future. Filing an intent to use application allows the trademark owner to establish trademark rights before actual use of the trademark begins. If a trademark applicant files a trademark application based on actual use, this means that the trademark is currently being used in interstate commerce.
Use-Based Trademark Applications
The federal trademark registration process is a lot more complex that it appears. Generally, a business can only establish rights in a trademark by using the actual trademark in commerce. A trademark application filed with the USPTO after commercial use of the trademark is commonly called a “use-based” trademark application.
Intent-To-Use Trademark Applications
A trademark application may be filed by the business before commercial use of the trademark, so long as the business or entrepreneur can allege a bona fide “intent to use” the mark in commerce with its goods or services. This trademark filing basis for application is commonly called the “intent-to-use” or “ITU” application.
However, the USPTO will not issue a trademark registration until the business applicant files a Statement of Use or Amendment to Allege Use demonstrating that it has commenced use of the trademark in commerce.