Approximate Timeline for 1(b) “Intent to Use”
Federal Trademark Registration Application
1(a) “In Use”
- File application with U.S. Patent and Trademark Office (“PTO”) via “eTeas,” (PTO electronic filing). Filing date becomes default date of first use, aka “priority date;”
- Receive filing receipt from PTO (one day after filing of application);
- Examination period — receive and respond to correspondence (office actions “OAs”) from the PTO (can take six to eight months from date application is filed to receive OA) (can amend to allege use during this time, but doing so will back up priority date to the first use of the mark). Applicant may be required to Amend to Allege Use if there is a transfer of ownership in the mark / need for assignment of mark, as Intent To Use applications are NON-ASSIGNABLE);
- Application is Approved for Publication (usually eight to fourteen months after filing application);
- Mark is Published for Opposition (usually one to three months after mark is approved for publication) (mark is published in the “Official Gazette,” a publication of the U.S. Government. Anyone who believes that they would be “damaged by registration of the mark” has thirty (30) days from Publication of the mark to file an Opposition to the registration of the mark);
- BLACKOUT PERIOD (CANNOT file Amendment to Allege Use or Statement of Use during this time) (usually one to five months after mark is published for opposition);
- Notice of Allowance is issued (usually one to four months after mark is Published for Opposition);
- Statement of Use (“S-O-U”) or Request for an Extension of Time by which to File S-O-U is due 6 months from the date of the Notice of Allowance. There is a PTO S-O-U fee of $100.00 per international classification of goods and services. Applicant can file up to five (5) Requests for Extension ($150.00 per class);
- FEDERAL REGISTRATION!!
It can take twelve months or longer for a trademark to become federally registered. However, you can start using your mark IMMEDIATELY. Further, when you use your mark be sure to include the “TM” designation in superscript on the upper right-hand corner of the mark (if the mark is a trademark, which is applied to hard goods), or the “SM” designation in that location (if the mark is a service mark, which is used to indicate the source of services being offered). These designations serves as your notice to the consuming public of the proprietary rights that you claim in the mark. For more information about intellectual property designations, please see the Meanings of IP Designations Fact Sheet.