How to Register a Trademark in the US
So you’ve come up with a fantastic trademark that looks like a good option for your company and passes our initial trademark search. What happens next?
First, of course, you need to place an order with Haloo. Once that happens, our AI software will run a comprehensive search for you and provide you 1) a report that analyzes your mark’s chances of successful registration at the USPTO and 2) an expertly crafted application based on your user information. If the comprehensive search results align with your expectations and everything looks accurate in your application, it’s time for the next step!
You file your application yourself at the USPTO with the help of our written instructions. The application website may look confusing, but breathe easy! It’s less complicated than it looks, and we’re here to help! Be sure to have your payment information ready, as you’ll need it at the end of the process to pay for your application filing fees. You also have the option of having the team at Haloo file on your behalf. We just need your application filing fees paid to us first, then we take it from there.
After your application is filed at the USPTO, you’ll have to wait a while before you hear about your application’s fate. Although previously it took about 3-5 months for the trademark examining attorneys at the USPTO to perform initial examinations of applications, this time has more recently grown to an average of 6-7 months. In the meantime, you may receive a few other messages.
Filing Receipt: Depending on how your contact information is listed on the application, you may receive an emailed filing receipt from TEAS@uspto.gov acknowledging the filing of your application right away. You do not need to respond to this email.
Notice of Design Search Code: If your mark has design elements in it, you may receive an email at some point assigning design search codes to your mark. This is simply an administrative formality which allows examining attorneys to search the Trademark Register for design marks. You do not need to respond to this email.
Misleading trademark solicitations: Unfortunately, many shady businesses attempt to scam applicants into paying for unnecessary services by sending them misleading emails and letters. These communications are often designed to look as if they come from an official government agency. If you receive any email or mail about your trademark application from anyone that doesn’t explicitly identify themselves as the USPTO and/or originate from a uspto.gov email address, it’s probably a scam and you can ignore it. If you see anything you’re unsure about though, please feel free to email us and check. You can read about these scams in more detail at https://www.uspto.gov/trademarks/protect/caution-misleading-notices.
Ideally, the next email you’ll receive from the USPTO will say something along the lines of “Notice of Approval for Publication” (If not, jump ahead to #6 in this article for more information). This means that your mark application has met all the USPTO’s substantive and administrative standards and is ready to be published for opposition in the Official Gazette. Publication isn’t instantaneous and usually occurs around a month after an application is approved; when the publication date is determined, the USPTO will email you that information. The USPTO will also email a notice when your mark is actually published. During the 30-day opposition period, anyone who feels your trademark registration could infringe on their trademark rights can file an opposition to your mark. Oppositions don’t occur that often, but if your mark is opposed, the USPTO will let you know. At that point you can either abandon your mark or argue against the opposition at the Trademark Trial and Appeal Board.
A. If your application passes the opposition period unchallenged and was based on your current use of the mark: If no one opposes your mark, your registration will issue approximately 3 months after the opposition period has ended.
B. If your application passes the opposition period unchallenged and was based on your future plans to use the mark but you aren’t using it yet: If no one opposes your mark, a notice of allowance will issue for your mark approximately 3 months after the opposition period has ended. Within 6 months, you’ll need to file a statement of use along with photographs or screenshots that show use of your trademark and pay associated fees (or you’ll file an extension to get more time to file your proof of use, but let’s keep things fairly simple for now). If there are no issues, the USPTO will approve your statement of use and your mark will register approximately 2 months later.
A. If there are issues with your initial application or with your statement of use: The USPTO will issue a formal letter called an “Office Action” which outlines these issues. You’ll have 6 months to file a response with the USPTO to try to resolve the issues.
B. If your response resolves the issues in the application or statement of use, the USPTO will approve your mark for publication (see: #4) or registration (see: #5B).
C. If your response does not resolve the issues with the application, a trademark examining attorney will issue a final office action. You can file responses for the next 6 months to try to resolve the issues. If you don’t file a response within 6 months or you don’t resolve the issues within that time, your mark will be abandoned, or you’ll be required to file an appeal with the Trademark Trial and Appeal Board (very few people end up doing this). If you fail to respond to office actions or to file a statement of use within the 6 month period, your application will be abandoned, which ends all processing of the application. You can file a petition with the USPTO to revive your application within two months of the official date of abandonment, but you will have to pay an extra fee.