Understandably, when people hear that their trademark applications have been approved, they feel relief and joy. That is fully merited. According to the most recent data available from the USPTO, over 83% of the trademark applications filed online have at least one problem that prevents them from being approved on first action. But what many applicants don’t realize is that approval is not the same thing as registration. In other words, an “approval” is good news, but we haven’t crossed the finish line yet. Depending on your filing basis, you have at least one and maybe more significant hurdles to clear before the celebration goes into full swing.
Hurdle 1: Opposition
Approval means that the Examining Attorney assigned by the USPTO to review your file is satisfied that the application either has no problems or that you have corrected the problems they identified. But you may be surprised to learn that the USPTO isn’t the only one who has a say in whether your mark gets registered. After the Examining Attorney approves your application, this process is opened up to the general public. For a period of 30 days, anyone may come forward and file an opposition to the registration of your mark. Actually, they can also file for extensions of time to oppose your mark, but that can only go on for so long: the time to file an opposition can only be stretched out to about 3 months.
The good news is that most U.S. trademark applications do not face opposition. That’s partly because it’s not cheap: Anyone who wants to oppose the registration of your mark will have to pay $600 in filing fees alone, not to mention the costs of pursuing the opposition. But if you’re among the unlucky applicants who do face opposition, the USPTO will suspend review of your application, and you will have to deal with opposition proceedings before the Trademark Trial and Appeal Board (TTAB). This process involves pleadings, discovery, and trial. Like any U.S. trial, unfortunately, these proceedings can last a long time and become very expensive. This is one of the reasons why it is very important to have someone with legal training in trademark searches perform a search for your mark before filing an application. You want to have an idea of how likely it is someone will come forward at the opposition phase before you make the leap of investing time and money into an application.
Regardless of your filing basis, you will face this post-approval hurdle.
Hurdle 2: Upper-level review
Hardly anyone talks about this, but you should be aware that your assigned Examining Attorney does not have the final say on anything. Anything. Their work is always subject to further review at multiple levels. There are several means by which other employees at the USPTO can compel the Examining Attorney to issue new refusals and/or requirements long after their first review of the application and even to claw back approvals.
Regardless of your filing basis, you will face this post-approval hurdle.
Hurdle 3: Specimens
If you make it through the opposition period with no problems, then your next steps are determined by your filing basis. If your filing basis is Section 1(a), 44(e), or 66(a), then – absent disaster – you should receive news within a few months that your mark has been registered.
If your filing basis is Section 1(b), your journey continues. About a month after the opposition period ends, the USPTO will issue a Notice of Allowance, aka NOA (pronounced either as the acronym or “Noah,” these are both ok). This document basically just asks you to submit your specimen of use – your proof that you really are using your mark out there in the real-world marketplace. If you fail to do that before your deadline (or fail to get an extension of the deadline), then your application will be abandoned. If you submit a specimen that’s unacceptable, then your application will be refused. If your specimen is approved, then – absent disaster – you should receive news within a few months that your mark has been registered.
Registration
Now it's champagne-popping time! Registration is the end of your application process. It is only after the registration certificate issues that you are now entitled to all the benefits that a U.S. federal trademark registration provides. Among many other benefits, you can now start using the circle R symbol, ®, beside your mark (and deterring others from using your mark or one that is confusingly similar to it). For more on this benefit, click here. Your mark will appear in the USPTO’s federal trademark database which USPTO Examining Attorneys will search for conflicting marks when reviewing future applications and which others will search when trying to determine if the mark they want to use is available. You’ll also have the legal presumption that you are the rightful owner of this trademark. By contrast, none of these benefits applies at the approval stage.
What's next? Now that you have your trademark registration, it could last forever. But you'll need to take certain steps to keep it alive. For more on what it takes to maintain your trademark registration, click here.
This information was posted on March 1, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.
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