I. Introduction

The previous report discussed the role and significance of specimens throughout the entire process of US trademarks, from application to maintenance, and how applicants can proactively use specimens to protect their trademark rights. The entire US trademark application process, as the foundation upon which applicants rely when filing, is key to methodical preparation and risk prevention against refusals at each stage.

II. The Process of US Trademark Application, Registration, and Maintenance

Given the importance of trademark registration to applicants, it is necessary to understand the US trademark application process. When a trademark is at different stages, applicants can more clearly understand the actions required at the current or next stage of their trademark, allowing for advance preparation to avoid losses caused by missing deadlines or incomplete responses.

To better understand the complete process of a US trademark from application to registration and subsequent maintenance, the following provides a brief illustration using an application based on use in commerce (commonly known as a 1(a) application) as an example (see Figure 1 below).

Before submitting a US trademark application, to reduce the risk of refusal by the trademark office and shorten the trademark examination cycle, it is advisable for applicants to conduct a preliminary search and screening of the desired trademark name. This helps identify potential grounds for refusal in advance, such as likelihood of confusion or issues with foreign language meanings, and allows for preparation of responses to possible office actions from the trademark office.

After confirming the trademark application information, applicants can submit the trademark application to the United States Patent and Trademark Office (USPTO) based on the trademark's use in commerce. According to the current USPTO trademark processing wait times [2], approximately 8.5 months after filing the trademark application, the USPTO will assign it to an examining attorney for review.

About one month after entering the examination cycle, the trademark office will notify the applicant of the examination result, which can be checked on the official website. There are two possible scenarios:

If the examining attorney determines that the application does not meet the requirements of US trademark law, an Office Action (OA) will be issued. Effective December 3, 2022, applicants must respond to the OA within 3 months from the date it was issued.

(1) If the applicant responds and the response is accepted by the examining attorney, the application proceeds smoothly to the publication stage.

(2) If the applicant responds but the response is not accepted by the examining attorney, further responses to a second or final OA may be required.

(3) If the applicant fails to respond by the deadline, or if the examining attorney determines that the final response does not resolve the issues raised in the OA, the application will be abandoned. Typically, a petition to revive and response to the OA can be filed within two months of the notice of abandonment. Failure to file the petition to revive within the allowable timeframe will result in the trademark being permanently abandoned.

If the examining attorney determines that the application meets the requirements of US trademark law, it will enter a 30-day opposition period, followed by a 3-month publication period. If a third party files an opposition during the 30-day opposition period, the opposition procedure will be followed. If no opposition is filed, the trademark can proceed to registration successfully.

After the trademark is successfully registered, it is important to note that between the 5th and 6th year after the registration date, the applicant must file a Section 8 Declaration of Use, providing evidence of the trademark's use in commerce during that period. Furthermore, a combined Section 8 & 9 Declaration of Use and Application for Renewal must be filed between the 9th and 10th year after registration, again requiring evidence of use. Failure to file the necessary declarations or renewal applications within the specified timeframes will result in cancellation of the trademark registration.

The above outlines the basic process for a 1(a) application. For flowcharts related to other filing bases (such as 1(b), 44(e), 44(d), and 66(a) applications) [4], please refer to the official website.

III. Termination of Attorney Responsibility and Obligations After Registration

Recent inquiries from some trademark applicants and our company's trademark status reviews have revealed that for some registered trademarks, even if the attorney of record was not formally withdrawn, the USPTO website shows no attorney listed. According to the Trademark Manual of Examining Procedure (TMEP) § 604.03, for trademarks that are registered, expired, or have undergone changes in ownership, the USPTO will cease to recognize the appointed attorney(s) for the trademark, meaning the attorney no longer has mandatory responsibility or obligation to monitor the trademark. Therefore, the removal of the attorney is an automatic action by the USPTO. Although the USPTO website's status page might not show a record of formally withdrawing the attorney, this is a normal occurrence. When the USPTO removes the attorney, it also places the applicant's name, email address, and other information in the correspondent information section. Consequently, only the applicant will receive subsequent official correspondence via email, and applicants need to pay close attention to official notices sent to their email address by the trademark office.

Furthermore, considering the post-registration maintenance requirements mentioned in the trademark registration process above, TMEP § 605.04 also states that even if an attorney is used to file the Section 8 declaration or the combined Section 8 & 9 renewal, the attorney's responsibility and obligation end upon the successful acceptance of the declaration/renewal, or upon the final refusal of the declaration/renewal leading to cancellation of the registration. From the USPTO's perspective, once the attorney's representation for a specific matter related to a trademark under their name is concluded, their responsibility and obligation to the trademark holder correspondingly cease.

In summary, from the USPTO's standpoint, an attorney's responsibility and obligation to handle subsequent matters for a US trademark end in three scenarios: after registration, after cancellation/expiration, and after a change of ownership. To prevent trademark cancellation due to missed deadlines, applicants must diligently monitor the official email correspondence sent to the email address provided during the application process, particularly for notices related to potential cancellation proceedings initiated by third parties or deadlines for filing Section 8 declarations and renewals.

IV. Conclusion

This report outlined the process of US trademark application, registration, and subsequent maintenance, as well as the three scenarios leading to the termination of an attorney's responsibilities and obligations. Applicants are advised to enhance their understanding of the US trademark application process and closely monitor the status of their trademarks after registration. Stay tuned for the next report.

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Pengzhuyun Policy Research Department

August 30, 2023

References:

[1] Timeline for Section 1(a) Application: https://www.uspto.gov/trademarks/trademark-timelines/section-1a-timeline-application-based-use-commerce

[2] Trademark Processing Wait Times: https://www.uspto.gov/dashboard/trademarks/application-timeline.html

[3] New Response Deadline for Office Actions: https://www.uspto.gov/trademarks/laws/2020-modernization-act/new-response-deadline-applications

[4] Timelines for Various Trademark Application Bases: https://www.uspto.gov/trademarks/trademark-timelines/trademark-application-and-post-registration-process-timelines

[5] TMEP: https://tmep.uspto.gov/RDMS/TMEP/current#