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Timeline for trademark creation, protection and launch

Posted by ipelton on: March 25th, 2015

Of course, every new brand name has unique circumstances and timing issues. And there are a plethora of factors that can disrupt this timeline. But here is a rough ideal timeline for protecting and launching a new brand name.

  1. Search potential names for clearance, and settle on one available name.
  2. As soon as possible after Step 1, apply to register the name at the USPTO based on an intent to use the name.
  3. Application will be reviewed by USPTO approximately 4 months after filing in Step 2.
  4. Receive preliminary approval at USPTO, hopefully, four to six months after filing in Step 2.
  5. The trademark application is published in public record (the “Official Gazette”) by the USPTO approximately two months after Step 4.
  6. During the 30 day publication period, hopefully no one files an objection (“Notice of Opposition”) or an extension of time to oppose.
  7. Approximately one month after the end of the publication period, two months after Step 5, the USPTO issues a “Notice of Allowance.”
  8. Begin using the trademark in commerce anytime after the publication period in Step 6.
  9. Submit evidence of using the trademark in commerce to the USPTO and complete the registration process.
  10. 10. Receive a registration certificate approximately two months after submitting evidence of use in Step 9.

The entire registration process, for an ‘intent to use’ application, therefore takes approximately one year or longer.  If there are any delays such as a substantive refusal by the USPTO, and extension of time to oppose filed, or more than a few weeks between the Notice of Allowance and filing the State of Use, the process will take longer. If the application is completely “smooth sailing” and all filings (Statement of Use, etc) are made with days of their eligibility, it is possible to receive the registration in less than 10 months, as I did for THE NONTRADITIONAL TRADEMARK LAWYERS.

Below is the timeline from the USPTO database from on a recent registration received by a client (Registration No. 4705197), with the oldest event (filing) at the bottom:

Date Description
Mar. 17, 2015 REGISTERED-PRINCIPAL REGISTER
Feb. 13, 2015 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Feb. 12, 2015 ALLOWED PRINCIPAL REGISTER – SOU ACCEPTED
Jan. 22, 2015 STATEMENT OF USE PROCESSING COMPLETE
Nov. 07, 2014 USE AMENDMENT FILED
Jan. 15, 2015 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Nov. 07, 2014 PAPER RECEIVED
Oct. 28, 2014 NOA E-MAILED – SOU REQUIRED FROM APPLICANT
Sep. 02, 2014 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Sep. 02, 2014 PUBLISHED FOR OPPOSITION
Aug. 13, 2014 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Jul. 26, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED
Jul. 26, 2014 ASSIGNED TO LIE
Jul. 15, 2014 APPROVED FOR PUB – PRINCIPAL REGISTER
Jul. 02, 2014 TEAS/EMAIL CORRESPONDENCE ENTERED
Jul. 02, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE
Jul. 02, 2014 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jun. 15, 2014 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION WRITTEN
Jun. 12, 2014 ASSIGNED TO EXAMINER
Mar. 22, 2014 NOTICE OF PSEUDO MARK E-MAILED
Mar. 21, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Mar. 12, 2014 NEW APPLICATION ENTERED IN TRAM

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TPAC Meeting Summary – February 2015

Posted by ipelton on: March 2nd, 2015

Last Friday,the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting (while I was not in attendance, associates and intern from the firm were):

This was the first TPAC meeting of Commissioner Mary Boney Dennison since taking her post in January. Three new (or returning for new terms) members were introduced: Jonathan Hudis, Jody Drake, and Tim Lockhart.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • Quite a bit of activity (hearings and proposed bills) recently on capitol hill related to IP issues, particularly patent and copyright issues

USPTO Budge Update – Frank Murphy (Deputy Chief Financial Officer)

  • Reduction of certain trademark fees implemented January 17, 2015; impact has been anticipated
  • FY2016 budget released in February. Includes using some funds from USPTO operating reserves.
  • FY2016 includes plans for to hire 37 net trademark examining attorneys.
  • FY2016 budget includes a decrease in the IT spending for Trademark Next Generation.
  • USPTO is conducting a bienniel review of all its fees, including some proposals to adjust trademark and TTAB fees.

Trademark Operations – Commissioner Dennison

  •  Application filings thus far in FY2015 are up more than 7% over the prior year
  • New trademark application fees and electronic filing option took effect January 17, 2015
  • The TM-5 group is working on some new collaborations
  • USPTO will be hosting their annual meeting in November

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • Two recent round tables were held, one on ESTTA and the other on possible rules changes
  • A proposal for possible rules changes could be issued in the near future

USPTO TPAC Agenda – February 27, 2015

The USPTO is supposed to be an American symbol and repository of technology, entrepreneurship and innovation. But it is now 2015 and the USPTO website is still not available from a mobile phone (yes, there is a Beta update to the website, but many pages on it are not mobile formatted, including most pages with any specific file information or filing processes). And there is no app, and no app on the horizon to my knowledge.

According to the USPTO website, “The USPTO is at the cutting edge of the nation’s technological progress and achievement.”

Really? The USPTO should invest the appropriate resources immediately to create and app and format all of its pages and systems and data for use across all screens. The more people that can use the USPTO systems, and the easier they are to use, the more informed the public will be and the more complete the patent and trademark registers will be. In other words, making the USPTO website and filings available to more people in more ways has a direct impact on the economy and the protection and strength of US intellectual property .

United States Patent and Trademark Office

In 2013, a total of 326,306 trademark applications were filed with the USPTO.  The number of trademark filings increased in 2014, to 336,239. [These numbers come from a T.E.S.S. search conducted on January 6, 2015.]

The number of registrations issued in 2014 also grew over the prior year.

Registrations issued in 2014: 204,624

Registrations issued in 2013: 194,274

Registrations issued in 2012: 187,527

With the rate of growth in application filings and registrations issued, the USPTO trademark register indicates steady and increasing growth in the economy. There are currently more than two million ‘live’ US trademark registrations! (2,008,878 to be exact)

[Note – data retrieved from USPTO.gov on 01/06/2015]

Related posts:

Top Trademark TrendsSM of 2014

By Erik M. Pelton & Associates® – The Nontraditional Trademark Lawyers®

Once again, trademarks and pop culture collided frequently in 2014. For example, more than 50 “JOHNNY ____” applications were filed this year as quarterback Johnny Manziel was drafted by the Cleveland Browns including JOHNNY MAN’Z ALE, JOHNNY CLEVELAND, JOHNNY HOCKEY, JOHNNY PIGSKIN, and JOHNNY BENCHWARMER. Another football trademark story made big news as the U.S. Patent and Trademark Office (“USPTO”) ruled in a case to cancel the Redskins trademark registrations.  Other big news stories, like the ebola outbreak, also were reflected the trademark filings. Another remarkable trademark story from 2014 was the Supreme Court, for the first time in several years, hearing a trademark case (B&B Hardware, Inc. v. Hargis Industries, Inc.). The case involves the differences in proceedings before the USPTO’s trademark appeal board and the Federal courts, and the Court will likely rule on it in the spring of 2015. Here is a summary of the year’s major trademark related developments:

Washington, DC Professional Football Team Trademark. In June, the USPTO’s Trademark Trial and Appeal Board granted a request filed by several Native Americans to cancel those trademarks that feature the term “Redskins.” However, the decision is now on appeal and the ongoing dispute, which has lasted for over a decade, continues. Following the decision, many other applicants filed trademark applications for potential team names, such as WASHINGTON AMERICANS, WASHINGTON NATIVES, WASHINGTON FEDSKINS, WASHINGTON WARRIORS.

Popular Terms: Selfie, Drone, Weed, Vape, and more. Once again, the most popular words and phenomena in pop culture made their way into many trademark filings. The 2014 word of the year, according to Oxford English Dictionary, is “Vape.”  And business owners certainly agree as more than 300 applications were filed at the USPTO featuring the word VAPE. Other popular trademark terms in 2014 included SELFIE (140+ applications), DRONE (100+ applications), and WEED (150+ applications). More than 100 filings in 2014 contain the “#” hashtag symbol. Online and environmental branding trends from the last few years contained in 2014 as SOCIAL remained popular (400+ applications), along with CLOUD (700+ applications), while more than 1,000 applications were filed featuring GREEN.

Logo Trends. As even more business and advertising moves online and via mobile devices, logos are trending to simpler smaller designs, which make them faster to load and easier to see on mobile screens. Terrific logo redesigns from popular online businesses include those from FOURSQUARE , PayPal, and AirBnB.

 PayPal Logo

Ebola. The spread of ebola was certainly a big story in 2014. At the USPTO, there were several applications filed for ebola related treatments and products including ZMAPP (Pharmaceutical preparations for treatment of Ebola virus infections), EBOLAHOL (antiviral disinfectant products for Ebola), EBOLAWAY (Antibacterial and antiviral sprays and wipes for eliminating bacteria and virii), and EBOLA OUTBREAK MAP.

Controversial Trademark Filings. The ALS Association rode a wave of viral social media activity last summer to raise more than $100 million dollars. Most of the activity was the result of the “ice bucket challenge.” The Association made quite a stir later in the summer when it applied to register four trademarks featuring the phrase, including ICE BUCKET CHALLENGE and #ICEBUCKETCHALLENGE. However, following a rapid backlash questioning the charitable intent and legality of claiming sole ownership and control of the phrase, the Association withdrew the applications.  Other questionable trademark filings included names related to tragedies, such as the MH17 and MH370 airplanes.  Last year’s trends noted the numerous BOSTON STRONG trademark application filings; as of today all but one of them has been abandoned.

Trademark scams continue. Despite one law firm’s successful quest to shutdown an operation preying on trademark holders, such scams from numerous companies offering negligible or questionable services remain prolific. Join a petition to “Request USPTO Investigation and Action Regarding Trademark Scams” here.

What to look for in 2015. Expect even more trademark disputes to go viral via social media, building upon the success of EAT MORE KALE fending off a claim from Chik-fil-A and Eat Mor Chikin. Also expect the number of nontraditional trademark filings to continue to grow as more brands protect colors, sounds, shapes, and other indicators of source featuring more than words or logos.

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© 2014 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2014, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a junior high school class.

Prior issues of Top Trademark TrendsSM