How to File a Trademark – Part 7

By Drew Stevens - November 27, 2018 - Technology & IP

If by some miracle you’ve persevered through our entire series on one of the fundamental cornerstones of intellectual property law—filing a trademark application—you deserve your blue ribbon. We Columbus, Ohio intellectual property lawyers will be the first to admit trademark law can be rather dry at times. In this post, we’ll wrap up our walk thru of a hypothetical TEAS Reduced Fee section 1(a) application with the United States Patent and Trademark Office and provide an overview of the trademark process after you submit your application.

Wrapping Up Your Trademark Application

After you select your basis for filing, you’ll be prompted to upload specimens showing examples of your trademark’s use in commerce. You’ll also be asked for the date of first use and the date of first use in commerce. Bear in mind, in the event of a conflict, these dates can become critical. Be sure you have evidence to back up whatever dates you put on your application.

On the next page, you’ll be prompted for correspondence information. This is different than the owner information you entered earlier in the application – the former is who holds the rights to the application. The latter is who will be corresponding with the USPTO and the assigned trademark examining attorney throughout the application process. Keep in mind that the correspondent information is public information, and you will likely receive a number of both spam and scam emails and other correspondence. Hiring an intellectual property law attorney in Columbus, Ohio can help address this issue, as that attorney will usually serve as the correspondent.

Finally, you’ll be asked to pay the filing fee, check all the declarations, and sign and submit the application. With the declarations, keep in mind that the application is subject to federal law. Willful false statements can lead to fines or three meals a day in one of America’s finest prisons.

Trademark Application Timeline

If you filed the section 1(a) TEAS reduced fee application, you can first expect to hear back from the USPTO within three to four months of filings. The USPTO will assign an examining attorney to your application. If the examining attorney finds any issues with the application, you will be issued an office action. Typically, once an office action is issued, you will have six months to respond.

Once you get any office action issues cleared up, the examining attorney will give the green light for your mark to be published in the USPTO’s Official Gazette. Publication in the Official Gazette typically occurs around a month after your application gets cleared by an examining attorney. Once your mark is published in the Official Gazette, any party has thirty days to file an objection to your trademark application. Think “speak now or forever hold your peace.”

If no party files an objection to your application, registration will typically issue within 2-3 months. Your official trademark certificate will be mailed to you (we recommend framing it, or at least proudly putting it on the fridge). Your application will also be accompanied by information from the USPTO regarding your future obligations and maintenance requirements to keep your trademark.

Correctly filing a thorough trademark application can be time consuming and there can be lots of room for error. While attempting a trademark application on your own may save you money in the short term, mistakes that result in USPTO office actions can end up costing you even more money long term. If you feel overwhelmed with your application or just want it done right the first time, email our IP attorney in Columbus, Ohio today.

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