All federal trademarks come with deadlines for filing of documents. This is true for applications and registered trademarks.
When a new application is filed with the United States Patent and Trademark Office (“USPTO”) the application will sit for 3-4 months before being assigned to an Examining Attorney with the USPTO. After the Examining Attorney reviews the application for completeness and similar trademarks already registered or applied for on the USPTO they will either, 1- let the trademark proceed to be Published for Opposition or 2- Issue an Office Action requesting more information from the Applicant (You).
- Time Point 1- You have 6 months from the USPTO issuing an Office Action to respond to their request.
If you fail to respond in the 6 months to the Office Action the USPTO will (usually within 2-3 months) issue an Abandonment Notice for Failure to Respond to the Office Action.
- Time Point 2- You have 2 months from the USPTO issuing the Abandonment Notice to Revive your application and proceed for further application processing. The filing fee for the Application for Revival is $100.
This game of back and forth with the USPTO can continue for quite some time before they will do one of two things: 1- Issue a Final Refusal based on whatever issue they have identified in your Application or 2- let the trademark proceed to be Published for Opposition.
- Time Point 3- You have 6 months from the USPTO issuing the Final Refusal to request and Appeal to their decision (time to get a lawyer if you don’t have one already).
If the Application is allowed to proceed to being Published for Opposition, the USPTO will give you a date that your Application will be placed into the Official Gazette for the world to see and evaluate for similar characteristics.
- Time Point 4- Once your Application has moved to the Official Gazette the rest of the world has 30 days to Oppose your Registration. Basically, the Opposing Party would file a document with the USPTO saying that your trademark is too close to their own, you would then get a good attorney to fight them on the Trademark Trial and Appeal Board (“TTAB”).
If you get through all of the time points, the Office Actions, and the time for Opposition (without being Opposed) and you have applied under Current Use Basis (“1a”) on your Application, you will be Registered and will be issued an Official Registration Number within 2 months. CONGRATS! You have an Official Trademark! (if you have filed an Intent to Use Application (“1b”) go here for the extra steps)
- Time Point 5- You have 5-6 years to relax on the Time Points. During this time you will be waging battle with the forces of Evil that attempt to register trademarks that are similar in nature to your own. It is time to defend the hill you have taken (and we help you do that with our Monitor function!) During the 5-6 year time period you have to file a statement with the USPTO verifying that you are still using the trademark with all of your listed Goods and Services. This filing is called the Section 8 (and 15) filing.
- Time Point 6- Your next filings will be due at year 10 and every 10 years thereafter. Once again you will be defending your trademark throughout the time you are waiting. Once at the 10th year of Registration you have to file the Section 8 and 9 filings claiming that you are still using the trademark on your Goods and Services.
If however, you took the Intent to Use route to your trademark and applied under a 1b application, you have a bunch more time points to pay attention to. Please go here to review the additional time points before you get to the Registration.
Throughout all of this, TrademarkFly is reminding you of your Time Points, we remind you of an approaching Time Point:
- Two months before
- One month before
- One week before
- One day before
- The day of
- and if you ignored all of those emails we will try again when the USPTO issues an Abandonment Notice
“We Bug you” is our motto for a reason. We REALLY doubt that you can claim “I didn’t know” on any of your Time Points ever again.
Calendar
Maintaining your Trademarks through efficient renewals, office action replies, and extension for time to file a use statement is a time consuming process. Calendar management is of fundamental importance, whether you’re a trademark owner, IP attorney or a corporate specialist. Trademark Fly can handle all of your calendar requirements. Trademark owner or firm the USPTO calendar process can be daunting to manage, this is where Trademark Fly steps in to give you the confidence you will not miss another deadline. To achieve this, we can provide you with a reminder service to support your trademark management process. We calendar any date that is of importance to you and the USPTO and then we send you an automatic reminder of the date one month before it is due, one week, one day, and then a final on the day the item is due. Ensuring that your trademarks are efficiently maintained.
Monitoring
Our product searches similar trademarks pending registration with the USPTO and internet search engine advertising for infringing uses of the trademark. Once a week our customers receive a detailed report of similar trademarks, domain names and the top three search engine advertisements for the trademark.