USPTO publishes mark
If the examining attorney raises no objections to registration, or if you overcome 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 you a notice of publication 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 30days 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 Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. It can take three to four months from the time the notice of publication is sent before the applicant will receive official notice of the next status of the application. During this time, you should continue to monitor the status of your application through the TSDR system as explained above in Step 3.
Registration certificate issues for applications based on use
If the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66(a), and no party files an opposition or request to extend the time to oppose, the USPTO will register the mark and send the owner a certificate of registration. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.
Notice of allowance issues for applications based on an intent to use the mark
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 eight weeks after the date the mark was published. The applicant then has six months from the date of the notice of allowance to either:
- Use the mark in commerce and submit a statement of use (SOU); or
- Request a six-month extension of time to file a statement of use (extension request).
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Trademark 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 a filing basis of intent to use a mark in commerce under Trademark Act Section 1(b).
Applicant files timely statement of use or extension request
The applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use (SOU) or file an extension request. More than one extension request may be filed, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within. Please review the additional information for the SOU use and extension request processes.
>> File Statement of Use << | >> File Extension Request <<
Applicant does not file timely statement of use or extension request
If the applicant does not file a statement of use or extension request within six months from the date the notice of allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within two months of the abandonment date.
USPTO reviews statement of use
A statement of use (SOU) must meet minimum filing requirements before an examining attorney fully reviews it. If the SOU does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration. Submission of an SOU does not guarantee registration. You may not withdraw the SOU and the filing fee(s) will not be refunded, even if the SOU/application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the SOU.
If refusals or requirements must still be satisfied, the examining attorney issues you a letter (office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately twomonths. If all issues are not resolved, the application will abandon.
Applicant’s response fails to overcome all objections
If your response does not overcome all objections, the examining attorney will issue a final refusal office action.If you disagree with thefinal refusal, you may, for an additional fee, appeal the decision to the TTAB.
