Checking the Status of Your Trademark Registration

By Josh Gerben, Esq.

The process to register a trademark can take eight to ten months on average, but occasionally, it can take a year or more before approval. In order to ensure a smooth, efficient process, it is up to you, the applicant, to check the status of your trademark and follow up as needed. Failure to do so could lengthen the process considerably, or cause your application to be abandoned altogether. Consider the following information about checking your trademark status.

Why You Should Check the Status of Your Trademark

There are many reasons you should frequently check the status of your trademark. Upon your initial trademark filing, you will send quite a bit of information to the United States Patent and Trademark Office, or USPTO. All of this information will be reviewed by a USPTO attorney (called an “examining attorney”). Once this initial review is complete, should any additional information be needed, the examining attorney will issue something called an “Office Action.”

If an Office Action is issued, your response is required within three months. It is critical to know when an Office Action has been issued because failure to respond in a timely manner could lead to the abandonment of your filing. If you need more time, you can apply for a one-time extension from the USPTO. The extension, which will give you an additional three months, has a fee of $125 and must be filed before the initial deadline passes.

Finally, once your application is approved by the examining attorney, a 30-day “opposition window” will open when any third parties could attempt to oppose your trademark filing. Any oppositions filed against your mark will also be listed on your trademark status. It is important to know the status of your trademark registration to ensure you take the correct action and meet the deadlines issued by the USPTO.

How to Check the Status of Your Trademark

It is fairly easy to check your trademark registration on the USPTO website, at http://tsdr.uspto.gov/. Enter your trademark serial or reference number on the Trademark Status and Document Retrieval (TDSR) page to receive the status of your pending and registered trademarks. You can check the status of any international trademark filings through the Madrid Protocol in the same search. In addition, you can view and download associated documents by clicking the “Documents” button. If you are unable to access your status on TDSR, you can also call directly during business hours.

While your application is pending, it is recommended that you check the status of your trademark every three to four months. After your trademark is registered you should check on the status every 2-3 months to ensure no attempt to cancel your registration are being made by third parties.

If you are being represented by a trademark attorney, check with the firm to learn how they handle status updates. Many attorneys will monitor a client’s trademark status, interpret the information for them, and notify them of any outstanding needs. If you receive a notice of action from your attorney, be sure to follow up in a quick to ensure that your trademark continues to move through the registration process.

Understanding Your Trademark Status

While the process to obtain your trademark status through TSDR may be simple, understanding what the status means to the registration process may be a bit more challenging.  A U.S. trademark attorney has a wealth of experience interpreting the trademark status of their clients.  Here are a few of the most common statuses:

• Under Examination—Once your application has been assigned to an examiner, it will be listed as Under Examination. The initial examination phase lasts approximately four months.
  
• Office Action Issued—If the examining attorney sees any legal problems with the trademark, an Office Action will be issued. This could be because your mark too closely matches an existing trademark, or it doesn’t meet other legal requirements.  For instance, geographic names or descriptive words cannot be registered.  It is imperative to respond to an Office Action within three months, or the application will be considered abandoned.
  
• Published for Opposition—When the examining attorney has no objections to registration, the trademark is published in the Official Gazette. After publication, anyone that believes the trademark should not be registered has 30 days to file an opposition.  This status represents the thirty day period that oppositions will be accepted.
  
• Notice of Allowance—If no oppositions have been filed in the thirty day period, a Notice of Allowance will be issued. This means that your trademark is allowed for registration, but it is not registered yet.  The Notice of Allowance initiates a six-month window in which the trademark registrant will need to provide a Statement of Use, or request a six-month extension to file the Statement of Use.
  
• Abandoned/Dead—If Office Actions are not responded to in a timely manner, or if the Statement of Use was not filed before the deadline, the application will be listed as Abandoned or Dead. Once a trademark application is abandoned, it is not protected from use by another individual.
  
• Registered—This status indicates that your trademark has been officially registered. You are now free to use the ® symbol, and no additional information or action is needed until the fifth or sixth year of trademark ownership.

Checking the status of your trademark application is essential to the registration process. Work with a trademark attorney to monitor your status frequently. Check to confirm that the USPTO has received requested documentation, and respond to Office Actions quickly. This ensures that your trademark registration process will move smoothly, saving you time and providing you trademark protections as soon as possible.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.