At Bay State IP, we pride ourselves on our expertise and dedication in handling the trademark prosecution process. We understand the intricacies of trademark law and the importance of securing and protecting our clients’ brands. Our firm’s extensive experience in trademark prosecution allows us to navigate the complexities of the United States Patent and Trademark Office (USPTO) efficiently and effectively. From conducting comprehensive trademark searches to advising on filing strategies and responding to office actions, we provide personalized guidance tailored to each client’s unique needs. We are committed to ensuring that our clients’ trademarks are not only registered but also strategically managed to maximize their value and protection. With a track record of successful outcomes and a client-centric approach, we are confident in our ability to deliver exceptional results in trademark prosecution matters.
Once a trademark application is filed with the USPTO, it enters the following phases:
1
USPTO Initial Review
The USPTO reviews the application to ensure it meets the filing requirements. This includes verifying that the correct fees have been paid, a specimen of use is provided, and the mark doesn't conflict with existing registered marks.2
First Office Action
If the examining attorney finds any issues with the application—be it procedural, technical, or legal—an Office Action is issued. The applicant has 3 months to respond. Failure to respond within this timeframe can result in the application being abandoned.3
Response to Office Action
If the applicant can resolve the objections, the application moves forward. If not, the USPTO may issue a final refusal, but applicants can appeal this decision to the Trademark Trial and Appeal Board (TTAB).4
Publication in the Official Gazette
If the mark passes the examination, it will be published in the Official Gazette. During the 30-day opposition period, any third party who believes they may be harmed by the registration can file an opposition to prevent the mark’s registration. If no opposition is filed, the registration process continues.5
Notice of Allowance (for Intent-to-Use Applications)
If the application is based on the applicant’s intention to use the mark in commerce (but not yet in use), the USPTO issues a Notice of Allowance after publication. The applicant has 6 months to either file a Statement of Use (SOU), demonstrating actual use, or request an extension.6
Statement of Use
Once the applicant provides evidence that the mark is being used in commerce, the application moves toward registration. If the applicant has not yet begun using the mark on all goods/services listed in the application, they must continue to file extension requests in 6-month increments (up to a total of 5).7
Issuance of Registration Certificate
Once the applicant successfully demonstrates use, or if the application was based on a foreign registration, a Certificate of Registration is issued by the USPTO, officially granting trademark protection. Maintenance documents must be filed at regular intervals to keep the registration active.
