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Lessons learned from a nine year trademark application

Posted by ipelton on: February 28th, 2013

A client was recently granted a trademark registration more than nine years after the application was filed! The application for the MAIN STREET OF AMERICAN U.S. HIGHWAY 66 design (below) was filed in January of 2004. The registration was issued in February of 2012.

There are some valuable lessons to take from this example:

  • The potential length – and suspension of – an application is another good reason to use an attorney for the application process — it can be a long and complex process, and tracking the status alone can be a difficult and burdensome task.
  • An applicant who moves or changes email addresses during the application process may not receive important communications from the USPTO. [For this reason, our firm has used the same PO Box for many years – even though our physical space has moved several times.]
  • Perseverance is important. An application rejected or refused at first may still have a chance of being registered.
  • During the application process here, the USPTO address moved as well. And their online filing system was upgraded and changed several times.
  • The filing date of an application is important, and filing as early as possible is almost always advisable. Here, anyone who filed for a “confusingly similar” mark at any time after January of 2004 would have been behind this applicant in the queue at the USPTO.

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