What to Expect After your Trademark Application is Filed

Confirm your trademark protects your products and services

A trademark application gives you an initial filing date for your “mark,” which includes the word(s), designs, logo, colors, or whatever you filed in your application.

Additionally, your trademark application only covers the goods and services that are included in the classification(s) you listed in your filing. It does not cover any goods or services that are outside your listing.

If you don’t remember the exact listing of goods and services included in your trademark application, you can look up all the documents that were filed using the USPTO’s Trademark Status & Document Retrieval (TSDR) online system. Just put in your application number and view either the “Status” information for an overview or the “Documents” for copies of everything that was filed.

When will the USPTO examine my trademark application?

Your trademark application gets put into a list of new applications that will eventually be assigned to a trademark examining attorney and then examined to see if it can be formally registered.

As of the time of this post, you can expect the assignment to an examining attorney to take several months. Overall processing times to the first action you’ll receive are around 9 months, and your application will be assigned to an examining attorney a few weeks before that. To look at the current processing times follow this link directly to the USPTO Current Processing Times. So, don’t be concerned if you don’t hear anything for a while after you file your trademark application.

So, what kinds of things should you do while you’re waiting for your trademark examination to start?

Start using your trademark properly

In the meantime, continue to use the “TM” designation to indicate that you are using your mark as a brand indicator. You don’t have to include the “TM” every time you use your mark, but you should include it on any products, packaging or official advertising materials. If you use your mark a lot, for example, on your website, then consider just using the “TM” designation on the most prominent uses.

You should also make sure you’re using your mark as a proper brand indicator. Usually, you will want to use your mark as an adjective to describe the goods or services you offer, instead of using it by itself. In other words, don’t use your branding as a replacement for the products or services you sell. Use your brand to describe the products and services you sell.

What type of diapers do you sell? Huggies diapers. Don’t just refer to your diapers as “Huggies.”

What type of search engine do you use? Google search engine. Don’t just say you use “Google.”

(This raises a bunch of other potential legal issues around famous brands, building a portfolio of trademarks, genericide, specimen, allegations and statements of use, renewal declarations, etc.)

The bottom line is, if you’re filing a new trademark application, you must eventually show the USPTO that you’re using it properly as a brand indicator for specific goods and services. While it’s easy to say don’t use your trademark as a noun or a verb, we know people do it all the time. The key is to also regularly use your trademark as an adjective in combination with the general words that identify your products and services.

Sign up for Amazon’s Brand Registry

If you’re selling products on Amazon, make sure to get signed up for Amazon’s Brand Registry program. Your trademark doesn’t have to be fully registered to get significant benefits from Amazon.

Start monitoring for potential infringing uses

You’ll also want to start looking out for how competitors or other people in your industry might use your trademark or similar branding assets.

At this stage, enforcement of your trademark rights can get complicated, because you can expose your trademark application to potential attack if you go after a savvy or aggressive infringer. So, make sure to talk with your attorney to make sure you understand the potential consequences and risks before sending out cease and desist letters.

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Don’t get scammed!

Be on the lookout for any scams that might target you as a new trademark applicant. You’ll definitely be targeted by at least a couple unsavory companies who send you letters that look official asking for payments. You also might get contacted by foreign companies or law firms who tell you that you must file for protection in their country because someone else is getting ready to file for the same trademark.

You don’t need to worry too much about this. If you filed your trademark application through an attorney then you can have confidence that all official communication will go through your attorney. Any mail or emails you might receive directly, not through your attorney, is almost definitely a scam and can be discarded or simply given to your attorney.

If you didn’t file through an attorney, then you’ll have to figure out which communications are authentic from the USPTO and which are scams.

If you’re ever unsure, talk with an experienced trademark attorney before sending payments or authorizations to anyone.

Start thinking about foreign trademark rights outside the US

Once your trademark application is filed, it's a good time to start considering the protection of your trademark rights in foreign countries. While your application provides protection within the United States, it doesn't automatically extend to other countries. If you have plans to expand your business internationally or believe that your mark may have value in foreign markets, it's important to explore trademark protection in those jurisdictions.

Each country has its own trademark registration system, and the process and requirements may vary. It's advisable to conduct thorough research and due diligence to identify potential conflicts or existing trademarks that may hinder your ability to register and protect your mark in foreign countries.

Do more due diligence

If you didn't conduct extensive clearance searching before filing your trademark application, now is a good time to prioritize due diligence. Clearing your mark involves conducting comprehensive searches to identify any existing trademarks that could conflict with your proposed mark. It helps ensure that your mark is unique and distinguishable, reducing the risk of facing opposition or rejection during the examination process.

Working with a trademark attorney can assist you in conducting thorough searches. They will help identify potential conflicts, evaluate the strength of your mark, and provide guidance on the likelihood of success during the registration process.

Performing due diligence after filing your application allows you to assess any potential challenges early on and make informed decisions regarding the future of your trademark. If conflicts or potential issues arise during the search process, it may be necessary to reevaluate your branding strategy, consult with your attorney, and potentially modify or withdraw your application if needed.

By investing time and effort into due diligence, you can mitigate risks, strengthen your trademark position, and increase the likelihood of successful registration and protection of your mark.

Work on your packaging and marketing materials

Now that your trademark application has been filed, it's an opportune time to focus on your packaging and marketing materials. The visual representation and messaging associated with your trademark play a significant role in establishing and promoting your brand identity. Here are some important steps to consider:

1. Consistency with Your Trademark: Ensure that your packaging and marketing materials align with the visual elements and messaging of your trademark. This consistency helps build brand recognition and reinforces the association between your mark and your products or services. Incorporate your trademark prominently and consistently across all relevant materials.

2. Quality and Professionalism: Pay attention to the quality and professionalism of your packaging and marketing materials. Well-designed and professionally produced materials can enhance the perceived value and credibility of your brand. Consider working with graphic designers, marketing professionals, or branding agencies to create visually appealing and engaging materials that effectively represent your brand.

3. Compliance with Legal Requirements: Make sure your packaging and marketing materials comply with legal requirements, including regulations related to product labeling, packaging design, and advertising. Consult with your attorney or regulatory experts to ensure that your materials meet all necessary legal standards and guidelines.

4. Showcase Your Trademark Properly: Use your trademark in a manner that complies with trademark guidelines and best practices. Avoid using your trademark as a generic term or verb, but rather as an adjective that distinguishes your products or services. Clearly display the appropriate trademark symbol (™) or (®) to indicate your trademark rights.

5. Market Research and Consumer Validation: Conduct market research to better understand your target audience, their preferences, and their response to your branding and marketing efforts. Gather feedback from potential customers and analyze consumer validation data to assess the effectiveness of your packaging and marketing materials. This information can help you refine your approach and make informed decisions for future iterations.

Remember, effective packaging and marketing materials not only attract customers but also contribute to the overall protection and value of your trademark. By investing in high-quality materials that accurately represent your brand, you can establish a strong brand presence in the marketplace and maximize the potential of your trademark.

Perform market research and validation

Launching a new product or service can take a lot of effort and iterations. Sometimes we discover the branding we thought would be successful doesn’t perform as well as it should.

If, for any reason, you find yourself looking at other options for your branding, then make sure to keep your trademark attorneys updated. While the US trademark examination process doesn’t necessarily result in more fees until the examination starts, sometimes it’s best to proactively dismiss a trademark application, especially in foreign countries where you’ll incur fees just to find out if anything new has happened since your last update.

Once trademark examination begins…

After the examining attorney at the USPTO has a chance to review your application, they’ll likely make a few requests and possibly issue a rejection of your application. Here are the typical types of request and issues we see:

• Informalities – examining attorneys will often request clarifications and minor changes in the language you submitted for either your goods and services or for your description of your mark.

• Descriptiveness – if the examining attorney thinks your mark is generic or “merely descriptive” of the types of products or services you listed in your application, you will usually get a rejection and have to respond with any arguments, if any.

• Distinctiveness or Likelihood of Confusion – the examining attorney will also issue a rejection if they think your mark is too similar to another existing mark for similar goods or services.

• Use in Commerce – if you haven’t already provided evidence that you’re already using your mark in interstate commerce, the examining attorney will request that you provide an allegation or statement of use (once you start using your mark in a qualifying way).

In Conclusion

Now that you are in the waiting period, be patient! Use your mark properly and watch for any scammers.

If you need any additional trademarks or have questions on trademarks our team is here to assist you and your business.

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