Please note the following graphic and text have been replicated from the United States Patent and Trademark Office at the following link: https://www.uspto.gov/trademark/trademark-timelines/section-44e-timeline-application-based-foreign-registration
Step 1. Application filed: The applicant files its U.S. application and relies on ownership of a foreign registration. The foreign registration does not have to be submitted with the U.S. application, but when the foreign registration is submitted it should meet all of the following criteria: 1) issued by a country that is a party to a treaty or agreement with the United States; 2) from the applicant’s country of origin; 3) owned by the applicant that filed the U.S. application; 4) the mark must be the same as the mark in the U.S. application; and 5) the goods/services must encompass the goods/services in the U.S. application. Approximately 3 months go to step 2.
Step 2. USPTO reviews application: If the minimum filing requirements for all applications are met, the application is assigned to an examining attorney who determines whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 to 2 months go to step 3a or step 3b.
Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified and the foreign registration certificate and English translation thereof was included in the application, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.
Step 3b. USPTO issues letter (Office action): If refusals or requirements are identified the examining attorney issues a letter (Office action) requiring the applicant to address the issues. For example if the U.S. application does not meet the 44(e) requirements the applicant must either correct the deficiencies or provide another filing basis, such as Section 1a (use in commerce) or Section 1b (intent to use). Additionally, if the application fails to provide a foreign registration certificate, the examining attorney will require the application to submit a foreign registration certificate and English translation thereof. Applications are not suspended pending submission of a copy of the foreign registration certificate, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). Within 6 months go to step 4a or step 4b.
Step 4a. Applicant timely responds: In order to avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If an applicant fails to submit a copy of the foreign registration certificate in its response, the applicant has failed to respond to an outstanding requirement. Accordingly, the examining attorney will issue a “final” Office action. The Office action makes final any remaining refusals or requirements. An applicant may respond to a final office action by (a) overcoming the refusals and complying with the requirements, or (b) appealing to the Trademark Trial and Appeal Board. Within 1 to 2 months go to step 5a or step 5b.
Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office Action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).
Step 5a. USPTO publishes mark: If the applicant’s response overcomes the refusals and/or satisfies all requirements including the submission of the foreign registration certificate and English translation thereof, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.
Step 5b. USPTO issues final letter (Office action): If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.
Step 6a. Applicant timely responds / Files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “final” Office action. Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 7a or step 7b.
Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office Action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).
Step 7a. USPTO publishes mark: Applicant has satisfied all the refusals and/or requirements. Accordingly, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by a potential opposer. No further action is taken until the opposition period (including any extensions of time) has expired and any oppositions are resolved. Approximately 3 months go to step 8.
Step 7b. Applicant’s appeal sent to TTAB: If the applicant’s response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of appeal with the Trademark trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.
Step 8. Mark registers: Within approximately 3 months after the mark published in the Official Gazette (OG), if no opposition was filed, then the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board (TTAB) dismisses the opposition. After a registration issues, to keep the registration “alive,” the registrant must file specific maintenance documents. Between 5 to 6 years go to step 9 or every 10 years go to step 10.
Step 9. Owner Files Section 8 declaration: Before the end of the 6-year period after the registration date, or within the 6-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.
Step 10. Owner files Section 8 declaration and Section 9 renewal: Within 1 year before the end of every 10-year period after the registration date, or within the 6-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.
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If you have already filed your application with the USPTO and require assistance with any of the further steps or would like a quotation for a new filing please contact us at info@marcaria.com. To visit our USA registration page please click here.
