What Happens Next?
After the USPTO determines that you have met the minimum filing
requirements, an application serial number is assigned and the
application is forwarded to an examining attorney. This may take
a number of months. The examining attorney reviews the application
to determine whether it complies with all applicable rules and
statutes, and includes all required fees.
A complete review includes a search for conflicting marks, and an
examination of the written
application  ,
the drawing ,
and any specimen .
If the examining attorney decides that a mark should not be registered,
the examining attorney will issue a letter (Office
action )
explaining any substantive
reasons for refusal ,
and any technical or procedural deficiencies in the application. If only
minor corrections are required, the examining attorney may contact the
applicant by telephone or e-mail (if the applicant has authorized communication
by e-mail). If the examining attorney sends an Office action, the applicant's
response to the Office action must be received in the Office within six
months of the mailing date of the Office action, or the application will
be declared abandoned.
If the applicant's response does not overcome all objections,
the examining attorney will issue a final
refusal .
To attempt to overcome a final refusal, the applicant may, for
an additional fee, appeal to
the Trademark
Trial and Appeal Board (TTAB) , an administrative tribunal within the USPTO.
If the examining attorney raises no objections to registration,
or if the applicant overcomes all objections, the examining attorney
will approve
the mark for publication in
the Official
Gazette,
a weekly publication of the USPTO.
The USPTO will send a Notice
Of Publication
to the applicant stating the date of publication. After the mark is published
in the Official Gazette, any party who believes it may be damaged by registration
of the mark has thirty (30) days from the publication date to file either
an opposition
to registration or a request to extend the time to oppose. An opposition
is similar to a proceeding in a federal court, but is held before the
TTAB. If no opposition is filed or if the opposition is unsuccessful,
the application enters the next stage of the registration process. A Certificate
of Registration
will issue for applications
based on use,
on a foreign registration under Section 44 of the Trademark Act, or an
extension of protection of an international registration to the United
States under Section 66(a). A Notice
of Allowance
will issue for
intent-to-use applications.
If the mark is published based upon the actual use of the mark
in commerce, or on a foreign registration, and no party files
an opposition or request to extend the time to oppose, the USPTO
will normally register the mark and issue a registration certificate
about twelve (12) weeks after the date the mark was published.
If the mark is published based upon the applicant's bona fide
intention to use the mark in commerce and no party files either
an opposition or request to extend the time to oppose, the USPTO
will issue a Notice
Of Allowance about
twelve (12) weeks after the date the mark was published. The
applicant then has six (6) months from the date of the Notice
of Allowance to either: (1) Use the mark in commerce and
submit a Statement
of Use;
or (2) Request a six-month Extension
of Time to File a Statement of Use.
Abandoned Applications
>Abandoned for Failure to
Respond
Abandoned means
that the application is no longer pending and, thus, cannot
mature into registration. During the pendency of an application,
an examining attorney will issue an Office
action letter
to the correspondence address of record. A response to that
letter must be received in the USPTO within 6 months from the
mailing date of that letter. If the Office does not receive
a response within this period, the application is declared
abandoned. The Office will then mail a Notice
of Abandonment to
the applicant or the applicant's attorney.
Applicant may petition
to revive the
abandoned application (return the application to active status)
if the delay in responding the Office action letter was unintentional.
A Petition to Revive includes a signed statement by someone
with first hand knowledge of the facts stating that the delay
in responding was unintentional, a $100 petition fee and a
response to the unanswered office action letter. The Petition
to Revive MUST BE RECEIVED IN THE OFFICE WITHIN TWO MONTHS
FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT. A Petition
that is not timely filed will be denied.
If a response was not filed because the applicant did not
receive the Office action, the applicant must still file a
Petition in order to revive the application. The applicant
need not include a response to the Office action.
If the abandonment resulted from the Office mailing the office
action letter to the wrong address, the Office will reinstate
the application at no cost. A Request for Reinstatement may
be faxed to (571) 273-8950. A REQUEST
FOR REINSTATEMENT MUST
BE RECEIVED WITHIN TWO MONTHS FROM THE ISSUE DATE OF THE NOTICE
OF ABANDONMENT. A REQUEST FOR REINSTATEMENT THAT IS NOT TIMELY
FILED WILL BE DENIED.
If a timely response was received in the Office, yet the application
was declared abandoned, the applicant may request reinstatement of the
application, provided they can submit proof of receipt in the Office.
Click on "proof"
for a listing of acceptable forms of proof of receipt in the Office.
>> Revival
Information Sheet <<
>Abandoned for Failure to
File a Statement of Use
Abandoned means
that the application is no longer pending and, thus, cannot
mature into registration. In response to the Notice
of Allowance (NOA),
a Statement
of Use (SOU) or Request
for Extension of Time to File a Statement of Use (Extension
request) must
be received in the USPTO within 6 months from the issue date
of the NOA. If the Office does not receive a proper SOU or
extension request within this period, the application will
be declared abandoned. The Office will then mail a Notice
of Abandonment to
the applicant or the applicant's representative.
Applicant may petition
to revive the
abandoned application (return the application to active status)
if the delay in responding to the NOA was unintentional.
A Petition to Revive includes a signed statement by someone
with first hand knowledge of the facts stating that the delay
in responding was unintentional, a $100 petition fee; the
required fees for the number of extension requests that should
have been filed if the application had not abandoned; and either
an SOU or the last extension request that was due. THE
PETITION TO REVIVE MUST BE RECEIVED IN THE OFFICE WITHIN
TWO MONTHS FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT.
A Petition that is not timely filed will be denied.
If an SOU or extension request was not filed because the Notice
of Allowance was not received, the applicant must still file
a petition in order to revive the application. A statement
of use or extension request does not have to be included with
the petition.
If a complete SOU or extension request was timely received
in the Office, yet the application was declared abandoned,
the applicant may request reinstatement of the application,
provided they can submit proof of receipt in the Office. A
REQUEST FOR REINSTATEMENT MUST BE RECEIVED WITHIN TWO MONTHS
FROM THE ISSUE DATE OF THE NOTICE OF ABANDONMENT. A REQUEST
FOR REINSTATEMENT THAT IS NOT TIMELY FILED WILL BE DENIED.
A Request for Reinstatement may be faxed to (571) 272-8950. Click on
"proof"
for a listing of acceptable forms of proof of receipt in the Office.
Please not that extension requests must be filed every six
months from the issue date of the Notice of Allowance until
the applicant is ready to file a Statement of Use. In addition,
the filing of a petition to revive does not stay the time for
filing extension requests.
>> Revival
Information Sheet <<
Abandoned for Incomplete Response
An applicant may revive an abandoned application when the
delay in responding to an Office action was unintentional.
This rule does not apply to the unintentional filing of an
incomplete response to an examining attorney's Office action.
When an application is deemed abandoned due to submission of an incomplete
response, the applicant’s recourse is to file a petition under
Trademark Rule 2.146. Such petitions can be granted only if a Petitioner
demonstrates clear error on the part of the examining attorney in holding
the application abandoned. See TMEP section 1713.
Respond to Notice of Allowance
A notice of allowance is a written notification from the USPTO
that a specific mark has survived the opposition period following
publication in the Official Gazette, and has consequently been
allowed; it does not mean that the mark has registered yet.
Receiving a notice of allowance is another step on the way to
registration. Notices of allowance are only issued for applications
that have been filed based on an intent-to-use a mark in commerce
under Trademark Act Section 1(b).
The Applicant has six months from the mailing date of the Notice
of Allowance in which to either file a Statement
of Use or
file an extension
request.
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