Registration Based on Intent to Use
Registration based on intent to use a trademark applies when the applicant has not yet started to use the trademark in commerce.
(1) Application Filled
First, an individual must file a federal trademark application. Once this is done, the application will be assigned a serial number. The applicant may check the status of the application at any time throughout the process by using serial number.
(2) USPTO Reviews Trademark Application
After about 3 months, the application will be assigned to an examining attorney at the USPTO. The examining attorney will conduct a review of the application to determine whether federal trademark law will permit the mark to be registered. After about 1 month, two options could happen
(a) USPTO Publishes the Mark
If there are no refusals or other requirements that are needed, then the examining attorney will approve the applicant’s mark for publication in the Official Gazette. This gives notice to the public that the USPTO plans to issue a registration for the mark. The mark will be published for a 30 day opposition period. These 30 days give any owner of a registered mark time to file an objection/opposition with the Trademark Trial and Appeal Board to state that their mark would be harmed by the registration of applicant’s mark. If this occurs, no further action will be taken until this opposition is resolved. If there is no opposition or after an opposition is solved, then about 3 months later, the USPTO will issue a notice of allowance for the applicant’s mark.
(b) USPTO Office Action
If a refusal occurs or other requirements are needed, the examining attorney will issue an office action stating the reasons for refusal or the other requirements needed. The applicant must respond to this letter and address each refusal and requirement within 6 months. If the applicant fails to respond to the office action within 6 months, then the application will be abandoned and the mark will not be publish. If the application has been abandoned, the applicant will have 2 months from the time the USPTO rules the application abandoned to revive the application, otherwise, a completely new application for the mark must be filed. If the applicant properly responds to the office action in time, the examining attorney will then review the response to determine if all previous refusals or requirements have been satisfied.
After 1-2 months of a properly submitted response to the office action, either (1) the examining attorney will approve and publish the mark in the manner stated above, or (2) the USPTO will issue a final refusal letter (Office Action 2). This final letter means that the response has failed to overcome all the refusals or requirements, and this is the final letter to state the application has failed in this regard. An applicant may respond to this final letter by either (1) overcoming and complying with the requirements in the letter, thus having the mark published as above, or (2) appeal to the Trademark Trial and Appeal Board. Either action by the applicant must occur within 6 months or the application will be abandoned. If appealing the final letter, after about 1-2 months from submitting the appeal, a final determination will be rendered regarding the application.
(3) Notification of Allowance Issued
2 months after the mark has been published in the Official Gazette, a notification of allowance (NOA) will be issued. This is not the same as a registration of the trademark. A NOA indicates that the mark will be allowed to be registered once a valid statement of use is filed. A statement of use must be filed within 6 months of the notification of allowance, otherwise, the application will be abandoned. One of three things will occur within the 6 months after the NOA:
(a) a statement of use will be timely filed once the applicant is using the mark in commerce on all of the goods or services listed in the NOA;
(b) if the applicant has yet to begin using the mark in commerce for the goods or services in the NOA, the applicant may file a 6 month extension for the statement of use. An applicant may file a total of 5 extensions for the application.
(c) if the applicant fails to either file a statement of use or an extension, then the application will be abandoned.
(4) Review of the Statement of Use
1 month after filing a statement of use, the USPTO examining attorney will determine if federal trademark law permits registration of the mark. One of two things will occur after the examination is done:
(a) the statement of use is approved and the mark is registered;
(b) the examining attorney issues an office action, in the manner stated above. If this occurs, the steps above must be followed.
(5) Required Maintenance After Successful Registration
(a) Between year 5 and 6 after successful registration, the mark owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure by the owner to file these will result in the cancellation of the trademark registration.
(b) Between year 9 and 10 after registration, the owner must file a Combined Declaration of Use or Excusable NonUse and a Application for Renewal under Sections 8 and 9. Failure by the owner to file these will result in either cancellation or expiration of the trademark registration.