The Federal Trademark Application Process

Federal Trademark Protection

Overview of process to achieve a federally registered trademark.

Trademark Application

The trademark application process for a federal trademark filed with the United States Patent and Trademark Office (USPTO) generally includes the following process at Church Legal:

• Initial Meeting - We will work to identify your intellectual property, current protection in place, and additional protection that may be available. We will discuss the process and cost benefit analysis for your consideration in the larger context of your goals. We will discuss the market and other tools available to evaluate the choices available.

• Trademark Questionnaire - Prior to filing a state or federal trademark application, we will review your completed trademark questionnaire and discuss.

• Preparation of the Application(s) - using the information in the trademark questionnaire(s), we will prepare the trademark application(s).

• Then…we wait - After we file the application, it will remain in queue for assignment to an examining attorney at the USPTO, this could take 3-9 months depending on the current processing times at the USPTO. During our meeting, we will discuss additional steps you can take during this waiting period to implement protections for your intellectual property.

• Examining Attorney Review - After reviewing the application, the examining attorney will approve the application for publication or issue an office action outlining the reasons why the application cannot move forward at this time. Some office actions are for issues that are very easy to overcome, while others would require a persuasive analysis and legal brief to attempt to overcome the issues outlined in the Office Action. If you have received an office action, we are available to discuss the nature of the issues and what would be required to overcome the issues raised so that you may better evaluate next steps.

• Services Post Filing of Application - We will be available to remain attorney of record and follow the application through the process to receiving a registration or notice of allowance (for an intent to use application). We will also be available to analyze any office action or opposition filings that your application encounters during the process.

• We will assist in filing any required statement of use, an additional step required for 1(b) “intent to use” applications, after a notice of allowance is issued by the USPTO.

• If requested by the client, post registration we will remain attorney of record to receive correspondence from the USPTO and other third parties, and we will docket your application for ongoing reminders.