Intent to Use Based Application Process – United States 1(b)

Begin Filing Process

Prepare Documentation

Prepare Documentation

Once we have information from you, we can prepare the necessary documentation for you to approve the filing of the application. Typically, we need to know the Mark, Owner of the mark, the goods &/or services, the date the mark was first used, as well as providing evidence showing use of the mark on at least one good or service for each class. If the Mark is a design mark, we also need a JPG image of the mark in proper form.

File Application on Basis of Intent to Use

Filing the Application

Once we have everything we need to file, including your approval, we strive to file the application that same business day.

File Statement of Use

Statement of Use

The applicant can file a Statement of Use at any time during the examination process. Click to see a flowchart of the Statement of Use process.

Examination by PTO

Examination by the PTO

Currently, the initial examination process by the PTO takes between four and six months.

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Office Action

Office Action

If the PTO has any issues with the application then an official issues. The applicant then has six months to submit a response to the application for further review. This process can occur several times before the application is either approved or definitively denied. Click to see a flowchart of the office action process.

Application Approved?

Is the Application Approved?

If the PTO has any issues with the application they will issue an office action. The applicant then has the opportunity to submit a response for further review. If the applicant chooses not to respond, the application will be denied.

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Blackout Period

Blackout Period

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Application Published

Publication

Once the application is approved, publication usually takes around six weeks. Once it is published, there is a thirty day window for parties to file an opposition to the trademark which can be extended by upto 90 days without any reasons given.

TTAB Opposition Process

The Opposition Process

If another party is opposed to the trademark application, then they can file an opposition, which commences an approximately two year process of administrative litigation before the Trademark Trial and Appeal Board determining if the mark can be registered. Click to see a flowchart of the opposition process.

Opposition Filed?

Is Anybody Opposed to the Application?

If another party is opposed to the application, they can file an opposition. The opposition process can take up to two years. Click to see a flowchart of the opposition process.

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Opposition Denied?

Is the Opposition Denied?

If the applicant is successful at the TTAB, the opposition will be denied and the application will be approved.

Notice of Allowance Issued

Notice of Allowance

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File Extension Request

Extension Request

After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension. After three years, if the mark is still not in use, the application is automatically denied.

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Application Denied

Denial of Application

Appeals are possible to the District Court, but they are rarely done, and even more rarely are they successful.

Mark is in Use?

Is the Mark in Use?

After a Notice of Allowance is issued, the applicant has three years to begin using the mark. If the mark is in use and a statement of use has not been filed, one must be filed at this time. If the mark is not in use, then an extension must be filed every six months for up to three years.

Every Six Months

Each Six Months if the Mark Is Not Yet in Use

After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension.

3 Years Have Passed?

Three Year Deadline

After a Notice of Allowance is issued, the applicant has three years to begin using the mark. After every six months, if the mark is not yet in use, the applicant must file for an extension. After three years, if the mark is still not in use, the application is automatically denied.

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Statement of Use Filed?

Statement of Use

Before final approval can take place, a statement of use must be filed. If one was not already filed before the Notice of Allowance was issued, then it must be filed at this time.

File Statement of Use

Statement of Use

The applicant can file a Statement of Use at any time during the examination process. Click to see a flowchart of the Statement of Use process.

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Final Approval Issued

Final Approval

Once the publication is complete and there is no opposition, it takes an additional six weeks for the registration to issue.

Process Complete

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