What Is the Process for Registering a Mark?

Once a mark appears to be registerable, there are two basic approaches we follow to federally register that mark:

   1. Via an "Intent to Use" application, we:
    ●  prepare and file the application in the USPTO;
    ●  successfully respond to any challenges raised by the Examiner;
    ●  survive the opposition phase;
    ●  receive a notice of allowance;
    ●  provide satisfactory evidence of use in interstate commerce; AND
    ●  obtain federal registration.

   2. Via a "Use-based" application, we:
    ●  prepare and file the application AND satisfactory evidence of use in
         interstate commerce;
    ●  successfully respond to any challenges raised by the Examiner
    ●  survive the opposition phase;
    ●  receive a notice of allowance; and
    ●  obtain federal registration.

Of the two, the first method is frequently preferred, because it typically provides more flexibility in providing proper evidence of use of the mark in interstate commerce.

More specifically, once the application is filed, at least 6 months typically pass before the Examiner reviews the application and provides feedback.  When that feedback is provided, sometimes the Examiner will express “objections” to the application, and the application might require some sort of adjustment (“amendment”) for the Examiner to be willing to let the process move forward.

Once the Examiner is comfortable, the application is published for “opposition”, a period during which someone who believes the mark causes a likelihood of confusion with their own mark can submit a written document to the USPTO objecting to registration of the published mark to you.  If no opposition is filed within the 1 month opposition period, the application eventually will be “allowed”.

Once an application is allowed, if not already submitted, such as via a Use-based application, you are given 6 months to file a Statement of Use, along with specimens evidencing that use.  If you have no such specimens at the end of the period, you can file for an “extension” of another 6 months, and can repeat this extension process for a total of 30 months.  At the end of 36 months from the date of the Notice of Allowance, if you have not successfully evidenced use of the mark in interstate commerce to the satisfaction of the USPTO, the application becomes abandoned.  Afterwards, you may start the process over again.


© 2002-2013  •  MICHAEL HAYNES PLC  •  LEGAL Notices    •  REVISED: 20130217  •  1-434-972-9988