Timetables

Timetable, U.S. Patent and Trademark Office Examination Procedure for Intent-to-Use Applications

Corporate Service Bureau does not employ attorneys or render legal opinions. Any evaluation or service offered should be used as a general guide based on our experience in providing trademark services and should not be substituted for the advice of a trademark attorney. Prices are subject to change without notice. Attorneys and clients should always be aware that adopting and using a trademark is never without risk, and that there is no guarantee that an application will be successful in obtaining registration.

1. Applications will normally take 2-3 days to prepare, and 1-2 weeks to be filed, depending on the attorney's and client's ability to provide the necessary information and documentation.
2. Up to 90 days from the date of filing an application with the U.S. Patent and Trademark Office, a filing receipt will be sent to the attorney. The Attorney should note the filing particulars, such as the Application Serial Number and filing date; and verify that all information is correct, such as the mark itself, the goods or services covered by the mark, the applicant's name and address and the attorney's address for correspondence.
3. After approximately 6 months form the date of filing, an Intent-To-Use application is examined for technical compliance with the rules and on issues of registrability, such as descriptiveness, confusing similarity to previously registered marks, etc. If any problems exist, the Examiner will send an Office Action, a refusal to which the Applicant has six months to respond by either correcting the technical deficiency or making arguments to overcome the Examiner's objections. There is currently no USPTO fee for filing a Response to an Office Action. Corporate Service Bureau will assist attorneys in responding to either technical deficiencies or issues of registrability or will refer the Applicant to a trademark attorney, if appropriate.
4. If the Examiner finds the application allowable, the mark will be published for opposition in the Trademark Office Official Gazette, triggering a thirty-day period for potential opposers to file a Notice of Opposition.
5. If no opposition is filed, the Examiner will issue a Notice of Allowance. Applicant then has six months in which to place the application in condition for registration by filing a Statement of Use, one sample of use, and an additional $100 filing fee per class.
6. If use has not commenced by the end of the six month period, additional six month extensions up to a total of three years can be obtained by filing additional $150 per class extension fees and statements of the Applicant's continued bona fide intent to use the mark. Corporate Service Bureau will charge an additional fee for filing either a State of Use or Request for Extension of time to file a Statement of Use.
7. Once the Statement of Use and sample of use are filed, the sample will be examined for compliance with the rules and to make sure they agree with the mark as applied for. As with the first examination stage, if any problems exist with the samples of use, the Examiner will send an Office Action, to which the Applicant has six months to respond by either correcting the technical deficiency or making arguments to overcome any refusals. Again, there is currently no USPTO fee for filing a Response to an Office Action. Corporate Service Bureau will assist attorneys in responding to either technical deficiencies or issues of registrability or will refer Applicant to a trademark attorney, if appropriate.
8. Once the Statement of Use has been filed and accepted, a Certificate of Registration will issue approximately 2-3 months later.
9. The entire registration process, from application to issuance of a Certificate of Registration, takes on average one year, for an application in which no objections are raised; or longer for applications which are hindered by Office Actions and/or Notices of Opposition, or which require extensions of time for filing Statements of Use.
10. A trademark registration is valid for renewable terms of ten years each, provided that between the fifth and sixth years of registration, the Registrant files an Affidavit under Section 8 (or Sections 8 and 15), stating that the mark is still in use in commerce, as evidenced by a sample showing the mark to be in use. If the Registrant fails to file such an affidavit, the registration will automatically be cancelled.

Timetable, Fees and U.S. Patent and Trademark Office Examination Procedure for Use Applications

Applications will normally take 2-3 days to prepare, and 1-2 weeks to be filed, depending on the attorney's and client's ability to provide the necessary information and documentation.

1. Up to 90 days from the date of filing an application with the USPTO, a filing receipt will be sent to the attorney. The attorney should note the filing particulars, such as the Application Serial No. and filing date; and verify that all information is correct, such as the mark itself, the goods or services covered by the mark, the Applicant's name and address and the attorney's address for correspondence.
2. After approximately 6 months from the date of filing, an application is assigned to an Examining Attorney and examined for technical compliance with the rules and on issues of registrability, such as descriptiveness, confusing similarity to previously registered marks, etc. If any problems exist, the Examiner will send an Office Action, a refusal to which the Applicant has six months to respond by either correcting the technical deficiency or making arguments to overcome the Examiner's objections. There is currently no USPTO fee for filing a Response to an Office Action. CSB will assist attorneys in responding to either technical deficiencies or issues of registrability or will refer the applicant to a trademark attorney, if appropriate.
3. If the Examiner finds the application allowable, the mark will be published for opposition in the Trademark Office Official Gazette, triggering a thirty day period for potential opposers to file a Notice of Opposition.
4. If no oppositions are filed, a Certificate of Registration will issue approximately 3 months from the publication date.
5. The entire registration process, from application filing to issuance of a Certificate of Registration, takes, on average, one year for an application in which no objections are raised; or longer for applications which are hindered by Office Actions and/or Notices of Opposition.
6. A trademark registration is valid for renewable terms of ten years each, provided that between the fifth and sixth years of registration, the Registrant files an Affidavit under Section 8 (or Sections 8 and 15), stating that the mark is still in use in commerce, as evidenced by a sample showing the mark to be in use. If the Registrant fails to file such an Affidavit, the registration will automatically be cancelled.