Roadmap & Timeline for an Intent to Use Trademark Application

Yesterday, we wrote about the Intent to Use Trademark Process. Today, let's break it down to the nitty-gritty timeline specifics.

• No time to read? Check out our infographic at the bottom.

Here’s a step-by-step timeline for an Intent to Use Trademark Application:

Step 1: Intent to Use Trademark Application Filed

- Submit an application based on your intention to use your trademark in commerce.

- Receive a USPTO serial number for tracking.

- Monitor your application's status through the Trademark Status and Document Retrieval (TSDR) system or by calling the trademark status line.

- Proceed to Step 2 approximately six to nine months later.

Step 2: USPTO Reviews Trademark Application

- Assess your application to ensure it meets filing requirements.

- An examining attorney is assigned to review federal law for trademark registration eligibility.

- Filing fees are generally non-refundable.

- Move on to either Step 3a or Step 3b in about one month.

Step 3a: USPTO Approves and Publishes for Opposition

- If there are no grounds for refusal, and your application satisfies legal requirements, it's approved for publication in the Trademark Official Gazette (TMOG).

- TMOG announces your trademark's impending registration about one month after approval.

- Within 30 days of publication, anyone concerned about your trademark potentially harming their business can file an opposition.

- Move to Step 8 approximately three months later.

Step 3b: USPTO Issues Office Action

- If there are grounds for refusal or your application doesn't meet legal requirements, an office action is issued.

- Respond within three months or request a three-month extension (with a fee).

- Move on to either Step 4a or Step 4b within three to six months.

Step 4a: Timely Response to Office Action

- To prevent abandonment, submit a timely response addressing refusals and requirements.

- The examining attorney reviews your response.

- Move on to Step 5a or Step 5b in about one to two months.

Step 4b: No Response – Application Abandons

- If you don't respond within three months, your application abandons.

- Receive a Notice of Abandonment, and your trademark won't register.

- To revive, file a petition within two months along with the petition fee.

- Move on to Step 5a or Step 5b in about one to two months.

Step 5a: USPTO Approves and Publishes for Opposition

- If no grounds for refusal remain and your application meets legal requirements, it's approved for publication in the TMOG.

- TMOG announces your trademark's pending registration about one month after approval.

- Within 30 days of publication, anyone worried about your trademark's impact on their business can file an opposition.

- Proceed to Step 8 approximately three months later.

Step 5b: USPTO Issues Final Office Action

- If your response doesn't resolve all refusals and requirements, a "final" refusal letter is issued.

- Appeal to the TTAB or submit a response within three months.

- An extension request (for a fee) is an option for an extra three months.

- Move on to either Step 6a or Step 6b in three to six months.

Step 6a: File an Appeal and/or Response

- To prevent abandonment, file a Notice of Appeal to the TTAB or submit a response within the timeframe.

- If your response doesn't address all final refusals and requirements and no appeal is filed, your application will abandon.

- Move on to Step 7a or Step 7b in about one to two months.

Step 6b: No Appeal or Resolution – Application Abandons

- If you don't appeal or address remaining issues within the specified timeframes, your application abandons.

- A Notice of Abandonment is issued.

- Revive the application within two months of the Notice of Abandonment, along with the petition fee.

- If filed later than two months after abandonment, a new application is your only option.

- Move on to Step 7a or Step 7b in about one to two months.

Step 7a: USPTO Approves and Publishes for Opposition

- If no grounds for refusal remain and your application meets legal requirements, it's approved for publication in the TMOG.

- TMOG announces your trademark's pending registration about one month after approval.

- Within 30 days of publication, anyone concerned about your trademark harming their business can file an opposition.

- Proceed to Step 8 approximately three months later.

Step 7b: TTAB Processes Your Appeal

- If your response doesn't address final refusals and requirements and you filed an appeal with the TTAB, the appeal is processed.

- For more appeal details, visit the TTAB webpage.

- Move on to Step 8 in three to six months.

Step 8: USPTO Issues Notice of Allowance (NOA)

- The NOA is issued within two months after your trademark's TMOG publication.

- It doesn't mean registration but indicates your trademark passed the opposition period.

- File an acceptable Statement of Use (SOU) within six months of the NOA date to proceed.

- Move to either Step 9a, Step 9b, or Step 9c within six months.

Step 9a: File Extension Request(s)

- If you're not yet using the trademark in commerce on all listed goods/services, file extension request(s) with the required fees.

- File up to five extension requests, each lasting six months.

- The first must be filed within six months of the NOA date.

- Continue to file extensions during an unexpired extension period.

- Move on to Step 10 within 30 months of the first extension request.

Step 9b: Timely File Statement of Use (SOU)

- If you're using the trademark in commerce on all listed goods/services, submit an SOU with fees within six months of the NOA date.

- You can't withdraw the SOU but can file one extension request after the SOU for more time to address issues.

- Move on to Step 11 in about one to two months.

Step 9c: No Timely SOU or Extension – Application Abandons

- If you don't file an SOU or extension request within six months, a Notice of Abandonment is sent.

- The application can't be processed, and your trademark won't register.

- To restart, file a petition to revive within two months of the Notice of Abandonment, along with the petition fee.

- If filed later than two months after abandonment, a new application is the only option.

Step 10: Timely File SOU After Requesting Extensions

- If you're using the trademark in commerce on all listed goods/services, submit an SOU with fees within six months of the last granted extension.

- You can't withdraw the SOU but can file one extension request after the SOU for more time to address issues.

- Move on to Step 11.

Step 11: USPTO Reviews SOU

- The SOU is evaluated to ensure it meets minimum filing requirements.

- If it does, the SOU is forwarded to an examining attorney to determine if registration is permitted.

- Filing fees won't be refunded even if the application is later refused.

- Move on to Step 12a or Step 12b in about one month.

Step 12a: USPTO Approves SOU and Registers Your Trademark

- If no grounds for refusal exist and your application meets requirements, your SOU is approved.

- About two months after SOU approval, your trademark registers.

- Periodically, file maintenance documents and fees to keep the registration active.

Step 12b: USPTO Issues Office Action

- If grounds for refusal remain or requirements aren't met, an office action is issued.

- Respond within six months or take the same steps as in Step 3b.

- If issues aren't resolved, the application will abandon.

In conclusion, navigating the Intent to Use Trademark Application process is a strategic journey that demands attention to detail and adherence to timelines. From filing to registration, each step plays a crucial role in securing your brand's identity. At TradeMark Express, we understand the intricacies of this process and are here to guide you every step of the way.

Ready to embark on this trademark adventure? Take the first step with confidence – explore our comprehensive trademark search and application services. Safeguard your brand's future success! ??

#TrademarkProtection #BrandStrategy #BusinessSuccess #TrademarkProcess #EntrepreneurialJourney

The information provided on this site is for general informational purposes only. All information on the Site is provided in good faith; however, we make no representation or warranty of any kind, express or implied, regarding the accuracy, validity, or completeness of any information on the Site.?The Site cannot and does not contain legal advice. The legal information is provided for general informational and educational purposes only, and is not a substitute for legal advice. Consult a licensed attorney for legal advice.