BEFORE FILING AN APPLICATION

What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. Back to top

What is a service mark?
A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks. Back to top

What is a patent?
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. For more information, click here. Back to top

What is a copyright?
A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact the U.S. Copyright Office (a division of the Library of Congress). Back to top

What is a certification mark?
A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others. Back to top

What is a collective membership mark?
A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.

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What is a collective mark?
A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. Back to top

Where can I get basic trademark information?
For information about applying for a trademark, click Basic Facts About Trademarks, and view the trademark videos that cover important topics and critical application filing tips. To understand what to expect in the overall process, view the timelines for trademark processing. If you still have questions, contact the Trademark Assistance Center at 1-800-7869199. Back to top

Must I register my trademark?
No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits. Back to top

What are the benefits of federal trademark registration?
Owning a federal trademark registration on the Principal Register provides several advantages, including:  Public notice of your claim of ownership of the mark;  A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;  The ability to bring an action concerning the mark in federal court;  The use of the U.S. registration as a basis to obtain registration in foreign countries;  The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;  The right to use the federal registration symbol ® and  Listing in the United States Patent and Trademark Office’s online databases. Back to top

Do federal regulations govern the use of the designations "TM" or "SM" or the ® symbol?
If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending. Back to top

Should I have an attorney?
You are not required to hire an attorney, but if you decide to prepare and submit your own application, you must comply with all requirements of the trademark statutes and rules and may be required to respond to legal issues raised by the USPTO. Because the application process can be complex, many applicants choose to appoint an attorney to represent them. If you choose to appoint an attorney, we will only communicate with your attorney. The USPTO cannot help you select an attorney. However, theAmerican Bar Association website includes information on how to find local attorneys who practice trademark law. Back to top

Is registration guaranteed and can I get a refund of money paid?
Registration is not guaranteed and only money paid when not required may be refunded. For information on why registration may be refused, see Basic Facts About Trademarks. Back to top

SEARCHING FOR SIMILAR TRADEMARKS
Should I conduct a search for similar trademarks before filing an application?
It is advisable to conduct a search before filing your application. See TESS TIPS for further information. Back to top

Where can I conduct a trademark search for trademarks in pending applications and federal registrations?
You may search the USPTO’s Trademark Electronic Search System (TESS) database free of charge before filing or you may wish to hire an attorney to perform the search and assess the results for you. Alternatively, you can search the database at a Patent and Trademark Depository Library (PTDL). Information about PTDL locations can be found here. Back to top

Will the Office conduct a search for me?
The USPTO cannot search your mark for you prior to filing. After filing, the USPTO will conduct a search and will refuse to register your mark if there is another registered or pending mark similar to yours. Back to top

FILING THE APPLICATION AND OTHER DOCUMENTS
Where can I find trademark forms?

You can find USPTO forms through the Trademark Electronic Application System (TEAS). Two forms are available for the initial application: regular TEAS and TEAS Plus. Both forms allow you to pay by credit card, electronic funds transfer, or through an existing United States Patent and Trademark Office (USPTO) deposit account. If you do not have Internet access, you can access TEAS at any Patent and Trademark Depository Library (PTDL) throughout the United States. Many public libraries also provide Internet access. We recommend using TEAS, but you may file a paper application. To obtain a printed form, call the Trademark Assistance Center at 1-800-786-9199. Back to top

What is the Trademark Electronic Application System (TEAS)?
The Trademark Electronic Application System allows you to fill out and file an application form online, paying by credit card, electronic funds transfer, or through an existing USPTO deposit account. TEAS can also be used to file other documents including a response to an examining attorney's Office action, a change of address, an allegation of use, and post registration maintenance documents. Back to top

Where do I send mail or make deliveries?
Although we recommend you file documents online using TEAS, paper mail may be sent to the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Submissions sent using other delivery services such as Federal Express, United Parcel Service, and DHL is not encouraged, but if used, must be delivered to: Trademark Assistance Center, Madison East, Concourse Level Room C 55, 600 Dulany Street Alexandria, VA 22314. Back to top

Who may file an application?
Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity. Back to top

May a minor file a trademark application?

The question of whether an application may be filed in the name of a minor depends on your state’s law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.” Back to top

Must I be a U.S. citizen to obtain a federal registration?
No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration. Back to top

What is the difference between “use in commerce” and “intent to use” in commerce?
The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.” Back to top

What is a specimen?
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website). Back to top

What is a drawing?
The "drawing" is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” For more information on the different types of drawings see Basic Facts About Trademarks. Back to top

Can you register the name of a musical group or band?
A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.

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What can I do to help the application proceed as smoothly as possible?
1. File the application and all other documents electronically through the Trademark Electronic Application System (TEAS). 2. Carefully review all documents before filing to make sure all issues have been addressed and all the necessary elements are included. 3. Authorize email correspondence and promptly inform the USPTO of any change in correspondence address, including your email address. This can be done through TEAS, available here. 4. Check the status of your application every 3-4 months using the Trademark Applications and Registrations Retrieval (TARR)database. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using the Trademark Document Retrieval (TDR) database. Back to top

AFTER FILING THE APPLICATION
Is registration of my mark guaranteed?
No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. The most common reasons for refusing registration are because the mark is:

    

Likely to cause confusion with a mark in a registration or prior application; Descriptive for the goods/services; A geographic term; A surname; Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure

(TMEP).
The examining attorney may also issue requirements concerning, for example:

   

The The The The

goods and services listed in the application; description of the mark; quality of the drawing; specimens.

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How can I check the status of my application?
Once you receive a serial number for your application, you can check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database. If you do not have access to the Internet, you can call the

Trademark Assistance Center at 1-800-786-9199 to request a status check. You should check on the status of your pending application every 3-4 months. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using the Trademark Document Retrieval (TDR) database. Back to top

How long will it take for my mark to register?
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here. Back to top

How do I file a Statement of Use or Extension Request after the Notice of Allowance is issued?
The Applicant has six (6) months from the mailing date of the notice of allowance to file either a Statement of Use or an Extension Request. If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a statement of use form, specimen and the required fee(s) within 6 months from the issue date the notice of allowance to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed. If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request form and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every 6 months calculated from the issue date of the notice of allowance until the statement of use is filed. A total of 5 extension requests may be filed. Back to top

If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?
You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted. Back to top

May I assign or transfer the ownership of my trademark to someone else?

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. For the guidelines for filing an assignment and the assignment form itself, click on Assignments or contact the Assignment Division at 571-272-3350. Back to top

AFTER THE TRADEMARK HAS REGISTERED
How long does a trademark registration last?
The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. For more information see Maintain/Renew a Registration. Back to top

Is a federal registration valid outside of the United States?
No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 and TMEP Chapter 1900 for further information. Back to top

What if someone else is using my registered mark on related goods and services?
You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties. Time can be of the essence. Click here for further information. Back to top

My spouse owned a trademark registration and has since died. Do I own it now?
Perhaps. Because this depends on state law, the USPTO cannot provide a definite answer for all factual situations. You should consider contacting an attorney. Local bar associations and phone directories usually have attorney listings. Click here for further information. Back to top

OTHER TRADEMARK QUESTIONS
What are “common law” rights?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. Back to top

What is “interstate commerce”?
For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels). Back to top

Will my information be public?
All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver’s license number. Back to top

What are trademark monitoring and document filing services?
You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency. Back to top

May a trademark filing company represent me before the USPTO?
Only licensed attorneys may represent you before the U.S. Patent and Trademark Office (USPTO). If you hire someone to represent you, he or she must be an attorney licensed to practice law in a U.S. state and be a member in good standing of the highest court of that state. Attorneys from other countries, except certain Canadian attorneys and agents representing Canadian filers, may NOT practice before the USPTO. Back to top

How can I view my documents if I cannot use TDR?
You can access a copy of your documents by using the TDR Application Programming Interface (API), which relies on specific URLs rather than the TDR interface presented through the USPTO website. You should follow these examples:

1. 2. 3.

To access all documents for Serial Number 72131351 as a PDF, enter the following in your search box:http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?sn=72131351 To access all documents for Registration Number 3,500,030 as a PDF, enter the following in your search box:http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?rn=3500030 To access all documents for Reference Number Z1231384 as a PDF, enter the following in your search box:http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?ref=Z1231384

Your Mark: Select One of Two Possible Formats
An important consideration is the depiction of your mark. Every application must include a clear representation of the mark you want to register. We use this representation to file the mark in the USPTO search records and to print the mark in theOfficial Gazette and on the registration certificate. Two possible mark formats are used: (1) standard character format; or (2) stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark; do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format.

Identification of Goods and Services
Once you have chosen your mark, you must also be able to identify clearly the precise goods and/or services to which the mark will apply. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. The level of specificity depends on the type of goods and/or services. For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual. Another resource is the International Schedule of Classes of Goods and Services. This is a listing, by class, of all of the headings for the international classes. It also identifies some of the most common items falling within the class, and includes explanatory notes indicating what the class specifically does and does not include. NOTE: Under U.S. Trademark law, class headings by themselves are not acceptable for registration purposes. The specific items of goods and/ or services must be listed.

Searching Marks in USPTO Database
You should search the USPTO database before filing your application, to determine whether anyone is already claiming trademark rights in a particular mark. You may conduct a search online for free via our TESS (Trademark Electronic Search System) database. If your mark includes a design element, you will need to search it by using a design code. To locate the proper design code(s), please consult the Design Search Code Manual. NOTE: The USPTO is NOT able to conduct a search for you or provide legal advice concerning what would be a proper search.

If your search in TESS yields a mark that you think might conflict with your mark, make sure that the "Live/Dead Indicator" shows the mark to be "live." Otherwise, a "dead" mark could not be used to block your application.

Selecting the Proper "Basis" for Filing a Trademark Application
A trademark application must specify a "basis" for filing. Most U.S. applicants base their application on either their current use of the mark in commerce or on their intent to use the mark in commerce in the future. Under either the "use in commerce" basis or the "intent to use" basis, prior to registration you must demonstrate that you have used the mark in commerce. The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country. The basic difference between these two filing bases is whether you have started to use the mark on all the goods/services identified in your application. If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities). An "intent to use" basis requires filing an additional form and fee prior to registration that are not required if you file under "use in commerce" at the outset. Use is established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting a specimen (example) showing how you use the mark in commerce. Under certain international agreements, you may file in the U.S. based on a foreign application, foreign registration, or international registration. See Trademark Manual of Examining Procedure Chapter 1000 and Chapter 1900 for specific requirements.

Filing a Trademark Application
You may file your trademark application online using TEAS - the Trademark Electronic Application System. TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the Internet. Before accessing the electronic application form, you can preview the pages, to see what information will be required before starting the process. You may also contact the Trademark Assistance Center at 1-800-786-9199 (1-571-272-9250) for a paper form. Paper forms are not processed as quickly as those submitted electronically, however.

Fees and No Refunds
The filing fee for your application will be based on the following: (1) NUMBER OF MARKS: Only ONE mark may be filed per application. If you have multiple marks, they require separate applications, each with its own filing fee; (2) NUMBER OF CLASSES: You must pay for each class of goods and/or services in the application. For example, if the application is for one mark but the mark is used on goods in two different classes, such as computer software in Class 9 and t-shirts in Class 25, then a filing fee for two classes is required before the application could be approved; and (3) THE VERSION OF THE FORM BEING USED: The application filing fee for the TEAS Plus version of the form is $275 per class of goods and/or

services, but with stricter requirements, while regular TEAS is $325 per class. For more information about fees, including payment options and a listing of other trademark fees, see the overall Trademark Fee Information page. NO FEE REFUNDS: The filing fee is a processing fee that the USPTO will NOT refund, even if you ultimately do not receive a registration for your mark. Registration is NOT automatic and requires legal review by an examining attorney. Please take all necessary steps to ensure your mark is registrable before filing an application. WARNING: Additional fee(s) and filing(s) will be required if you select the "intent to use basis" in the application form. Documents showing use of the mark in commerce will be required before registration.

Monitoring Status of Your Application
You may monitor the progress of your application through the TARR database. It is important to check the status of your application every 3-4 months after the initial filing of the application. Please review the additional information on status.

Protecting Your Rights
You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for a similar mark used on related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.

Trademark Manual of Examining Procedure
For more detailed information on various topics, you may also wish to consult the Trademark Manual of Examining Procedure (TMEP) (7th Edition). The TMEP provides trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the current law, practices, and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for examining attorneys and materials in the nature of information and interpretation, and outlines the procedures that examining attorneys are required or authorized to follow in the examination of trademark applications.

Trademark Application & Post-Registration Process Timelines
Applying to register your trademark with the USPTO begins a legal process. Legal requirements and deadlines must be met and fees may be required throughout the process. Not all applied-for trademarks register. Every trademark application must have a legal basis for filing. The filing bases under federal trademark law are: Section 1(a) Use; Section 1(b) Intent-to-Use; Section 44(d) Foreign application; Section 44(e) Foreign registration; and Section 66(a) Madrid Protocol. If your trademark registers, additional legal requirements, fees, and deadlines must be met to maintain your registration and keep your trademark registered.

The following timelines provide an overview of the process steps and time frames for filing a trademark application with a particular filing basis and for maintaining a trademark registration.

Section 1(a) Timeline: Application based on use in commerce A Section 1(a) filing basis is applicable when you are currently using your trademark in commerce with all the goods/services in your application. You must provide the date you began using your trademark and a specimen (real-use sample) showing how the mark is actually being used with the goods/services.

Section 1(b) Timeline: Application based on intent to use A Section 1(b) filing basis is applicable when you have not yet started using your trademark. You must use the trademark and pay an additional fee prior to registration.

Section 44(d) Timeline: Application based on foreign application A Section 44(d) filing basis is applicable when you have filed for the mark in a foreign country.

Section 44(e) Timeline: Application based on a foreign registration A Section 44(e) filing basis is applicable when you have been granted a foreign registration for the same mark.

Section 66(a) Timeline: Application based on the Madrid Protocol A Section 66(a) filing basis is applicable when you have filed an Extension of Protection under the Madrid Protocol.

Post Registration Timeline for all Registrations except Madrid Protocol-Based Registrations After a registration issues, to keep the registration "alive" or valid, the registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of your registration.

Post-Registration Timeline for Madrid Protocol-Based Registrations After protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of your U.S. registration and the invalidation of protection of the international registration by the USPTO.

Section 1(a) Timeline: Application based on use in commerce
Place your mouse over the steps for more information on each step.

1. Application Filed
approx. 3 months

2. USPTO reviews application

approx. 1 month

3a. USPTO publishes mark
approx. 3 months

OR
3b. USPTO issues letter (Office action)
within 6 months

4a. Applicant timely responds
approx. 1-2 months

OR
4b. Applicant does not respond and application abandons 5a. USPTO publishes mark
approx. 3 months

OR
5b. USPTO issues final letter (Office action)
within 6 months

6a. Applicant timely responds / Files appeal
approx. 1-2 months

OR
6b. Applicant does not respond and application abandons 7a. USPTO publishes mark
approx. 3 months

OR
7b. Applicant's appeal sent to TTAB 8. Mark registers
bet. 5 & 6 yrs. every 10 yrs.

9. Owner files Section 8 declaration

AND
10. Owner files Section 8 declaration/Section 9 renewal
This timeline does not cover every application scenario. If you find that you are well outside of the listed timeframes, call your assigned examining attorney or the Trademark Assistance Center (TAC) at 571.272.9250.

Step 1. Application filed: The filed application is assigned a serial number. This number should always be referenced when communicating with the USPTO. The applicant can check the status of any application throughout the entire process by entering the application serial number at http://tarr.uspto.gov/ or by calling the trademark status line at 571-272-5400. Approximately 3 months go to step 2. Step 2. USPTO reviews application: If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine 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 month go to step 3a or step 3b.

Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, 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. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8. Step 3b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement. Within 6 months go tostep 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. Approximately 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, 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. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is 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 and/or 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” refusal letter (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 and the applicant has not filed a Notice of Appeal to the Trademark Trial and Appeal Board, the application is abandoned. The term “abandoned” means that the application process has ended and 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, with the appropriate fee. 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: If the applicant's response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), the examining attorney approves the mark for publication in the Official

Gazette (OG). The OG, a weekly online publication, gives notice to public that USPTO plans to issue a registration.
Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is 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, 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 dismisses the opposition. After a registration issues, to keep the registration “alive” the registrant must file specific maintenance documents. Between 6 to 7 years go to step 9 and every 10 years go to step 10. Step 9. Registration owner files Section 8 declaration: Before the end of the 6-year period after the registration date, or within the six-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. Registration owner files Section 8 declaration/Section 9 renewal: Within one year before the end of every 10-year period after the registration date, or within the six-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 & 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.

Section 1(b) Timeline: Application based on intent to use
Place your mouse over the steps for more information on each step.

1. Application Filed
approx. 3 months

2. USPTO reviews application
approx. 1 month

3a. USPTO publishes mark
approx. 3 months

OR
3b. USPTO issues letter (Office action)
within 6 months

4a. Applicant timely responds
approx. 1-2 months

OR
4b. Applicant does not respond and application abandons 5a. USPTO publishes mark
approx. 3 months

OR
5b. USPTO issues final letter (Office action)
within 6 months

6a. Applicant timely responds / File appeal
approx. 1-2 months

OR
6b. Applicant does not respond and application abandons 7a. USPTO publishes mark
approx. 3 months

OR
7b. Applicant's appeal sent to TTAB 8. Notice of allowance is issued
within 6 months

9a. Applicant files extension request:
before end of 30 months

OR
9b. Applicant timely files Statement of Use (SOU)

approx. 1 month

OR
9c. Applicant does not timely file SOU or extension request: application abandons 10. Applicant timely files SOU after requesting extensions

11. USPTO reviews SOU
approx. 1 month

12a. SOU is approved and mark registers
between 5-6 yrs. every 10 yrs

OR
12b. USPTO issues letter (Office action) 13. Owner files Section 8 declaration

AND
14. Owner files Section 8 declaration / Section 9 renewal
This timeline does not cover every application scenario. If you find that you are well outside of the listed timeframes, call your assigned examining attorney or the Trademark Assistance Center (TAC) at 571.272.9250.

Step 1. Application filed: The filed application is assigned a serial number. This number should always be referenced when communicating with the USPTO. The applicant can check the status of any application throughout the entire process by entering the application serial number at http://tarr.uspto.gov/ or by calling the trademark status line at 571-272-5400. Approximately 3 months go to step 1. Step 2. USPTO reviews application: If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine 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 month go to step 3a or step 3b.

Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, 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. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8. Step 3b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement. Within 6 months go tostep 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. Approximately 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, 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. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is 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 and/or 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” refusal letter (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 o 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 and the applicant has not filed a Notice of Appeal to the Trademark Trial and Appeal Board, 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, with the appropriate fee. 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: If the applicant's response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), 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. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is 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. Notice of Allowance (NOA) is issued: A NOA is issued to the applicant within 3 months after the mark is published in the Official Gazette. The NOA is not a registration, but indicates that the mark will be allowed to register after an acceptable Statement of Use (SOU) is filed. The deadline for filing an SOU or request for extension of time (extension request) to file an SOU is calculated from the date the NOA issued. If the applicant does not file an SOU or extension request within 6 months of the date the NOA issued, the application will abandon. Within 6 months go to step 9a or step 9b or step 9c. Step 9a. Applicant files extension request: If the applicant is not using the mark in commerce on all of the goods/services listed in the NOA, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension

requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the NOA and subsequent requests before the expiration of a previously granted extension. Before the end of 30 months go to step 10. Step 9b. Applicant timely files Statement of Use (SOU): If the applicant is using the mark in commerce on all of the goods/services listed in the NOA, the applicant must submit an SOU and the required fee(s) within 6 months from the date the NOA issued to avoid abandonment. Applicant cannot withdraw the SOU; however, the applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU. No further extension requests may be filed. Approximately 1 month go to step 11. Step 9c. Applicant does not timely file SOU or extension request: application abandons: If the applicant does not file an SOU or extension request within 6 months from the date the Notice of Allowance issued, the application is abandoned (no longer pending/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. Step 10. Applicant timely files SOU after requesting extensions: If the applicant is using the mark in commerce on allthe goods/services listed in the NOA, the applicant must submit an SOU and the required fee(s) within 6 months from the previous extension to avoid abandonment. Applicant cannot withdraw the SOU; however, the applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU. No further extension requests may be filed. Go to step 11. Step 11. USPTO reviews SOU: If the minimum filing requirements are met, the SOU is forwarded to the examining attorney. The examining attorney conducts a review of the SOU to determine whether federal law permits registration. The applicant cannot withdraw the SOU and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month go to step 12a or step 12b. Step 12a. SOU is approved and mark registers: If no refusals or additional requirements are identified, the examining attorney approves the SOU. Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration "live," the registrant must file specific maintenance documents. Between 5 to 6 years go to step 13 and every 10 years go to step 14. Step 12b. USPTO issues letter (Office action): If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the SOU is approved, the USPTO issues a registration within approximately 2 months. If all issues are not resolved, the application will abandon. Step 13. Registration owner files Section 8 declaration: Before the end of the six-year period after the registration date, or within the six-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 14. Registration owner files Section 8 declaration / Section 9 renewal: Within one year before the end of every 10-year period after the registration date, or within the six-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.

Section 44(d) Timeline: Application based on a foreign application
Place your mouse over the steps for more information on each step.

1. Application filed
Approx. 3 months

2. USPTO reviews application
Approx. 1 month

3a. USPTO issues suspension letter
Immediately

OR
3b. USPTO issues letter (Office action)
Within 6 months

4a. Applicant timely responds
Within 1-2 months

OR
4b. Applicant does not respond and application abandons

5. U.S. Application suspended
Approx. 6 months

6. USPTO issues suspension inquiry
Within 6 months

7a. Applicant timely responds and does not submit foreign registration certificate

OR
7b. Applicant timely responds and submits foreign registration certificate
Approx. 1-2 months

OR
7c. Applicant does not respond and application abandons 8a. USPTO publishes mark
Approx. 3 months

OR
8b. USPTO issues final letter (Office action)
Within 6 months step 9a or step 9b

OR
8c. USPTO issues letter (Office action)
Within 6 months

8c-1. Applicant timely responds
Approx. 1-2 months

OR
8c-2. Applicant does not respond and application abandons 8c-1a. USPTO issues final letter (Office action)l
Within 6 months

OR
8c-1b. USPTO publishes mark
Approx. 3 months

9a. Applicant timely responds / Files appeal
Approx. 1-2 months

OR
9b. Applicant does not respond and application abandons 10a. USPTO publishes mark
Approx. 3 months

OR
10b. Applicant’s appeal sent to TTAB

11. Mark registers
Between 5-6 years Every 10 years

12. Owner files section 8 declaration 13. Owner files section 8 declaration and section 9 renewal
This timeline does not cover every application scenario. If you find that you are well outside of the listed timeframes, call your assigned examining attorney or the Trademark Assistance Center (TAC) at 571.272.9250. Step 1. Application filed: The applicant filed its U.S. application within 6 months of filing its foreign application in a country that is party to a treaty or agreement with the United States. The applicant’s country of origin must also be a party to a treaty or agreement with the United States. However, the foreign application relied upon does not have to be from the applicant’s country of origin. Section 44(d) alone does not provide a basis for publication or registration and the applicant must later provide a Section 1(b), Section 1(a), and/or Section 44(e) basis. Approximately 3 months go to step 2. Step 2. USPTO reviews application: If the minimum filing requirements for the U.S. application are met, the application is assigned to an examining attorney to determine 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 month go to step 3a or step 3b. Step 3a. USPTO issues suspension letter: If no refusals or requirements are identified, the examining attorney issues a letter suspending the action pending the submission of the foreign registration certificate and an English translation thereof. Go to step 5. Step 3b. USPTO issues a letter (Office action): If the examining attorney identifies any refusals or requirements, the examining attorney issues a letter (Office action). Within 6 months of the issue date of the Office action, the applicant must submit a response that addresses each refusal and/or requirement. Within 6 months go to step 4a or step 4b.

Step 4a. Applicant timely responds: 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 and will issue a letter suspending the application pending submission of the foreign registration certificate and English translation thereof and continuing any refusals and/or requirements. No action by the applicant, other then periodic status checks every 3 – 4 four months of the U.S. application (see http://tarr.uspto.gov), is required until the examining attorney issues a letter inquiring as to the status of the foreign application. Within 1 to 2 months go to step 5. Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action 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 5. U.S. application suspended: No action by the applicant, other then periodic status checks every 3 – 4 months of the U.S. application (see http://tarr.uspto.gov), is required. The application remains suspended until the examining attorney issues a letter inquiring as to the status of the foreign application. Approximately 6 months go to step 6. Step 6. USPTO issues suspension inquiry: If the foreign registration certificate has not been submitted, the examining attorney will issue a letter inquiring as to the status of the foreign application. This cycle will continue every 6 months until the applicant submits its foreign registration certificate and English translation thereof. Within 6 months go to step 7a or step 7bor step 7c. Step 7a. Applicant timely responds and does not submit foreign registration certificate: To avoid abandonment of the application, the applicant must submit a timely response indicating the status of the foreign application. If the foreign application is still pending, the examining attorney will issue a letter re-suspending the U.S. application. Go to step 5. Step 7b. Applicant timely responds and submits foreign registration certificate: When the applicant has submitted its foreign registration certificate and English translation thereof, the U.S. application is removed from suspension and the examining attorney reviews the foreign registration to determine if the mark, owner, and goods/services agree with those in the U.S. application. Approximately 1 to 2 months go to step 8a or step 8b or step 8c. Step 7c. Application 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 8a. USPTO publishes mark: 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 11. Step 8b. USPTO issues final letter (Office action): If the foreign registration certificate is acceptable but previously raised issues remain, the examining attorney will issue a “final” Office action to which the applicant must respond within 6 months, 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 9a or step 9b. Step 8c. USPTO issues letter (Office action): If the foreign registration is not acceptable, the examining attorney will issue a letter (Office action) to which the applicant must respond within 6 months. Within 6 months of the issue date of the Office action, the applicant must submit a response that addresses each refusal and/or requirement. Within 6 months go tostep 8c-1 or step 8c-2. Step 8c-1. 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. Approximately 1 to 2 months go to step 8c-1a or step 8c-1b. Step 8c-2. 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 trademark will not register. Filing fees are refunded when applications abandon. Abandoned “dead,” since they no longer pending or under consideration for approval. To continue process, applicant must file a petition revive within 2 months of abandonment date. If more than after date, be denied as untimely new with appropriate fee(s). Step 8c-1a. USPTO publishes mark: 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. Within 6 months go to step 9a or step 9b. Step 8c-1b. 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. Approximately 3 months go to step 11.

Step 9a. Application 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 10a or step 10b. Step 9b. 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 10a. USPTO publishes mark: If the applicant’s response overcomes the refusals and/or satisfies all requirements, 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 11. Step 10b. 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 11. Mark registers: Within approximately 3 months after the mark published in the Official Gazette (OG), if no opposition was filed, the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board 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 12 or every 10 years go tostep 13. Step 12. Registration 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 13. Registration owner files section 8 declaration/section 9 renewal: Within 1 year before the end of every 10-year period after the registration date, or within the 6-months grace period thereafter, the registration owner must file a Combined Declaration

Section 44(e) Timeline: Application based on a foreign registration
Place your mouse over the steps for more information on each step.

1. Application filed
Approx. 3 months

2. USPTO reviews application
Approx. 1-2 months

3a. USPTO publishes mark
Approx. 3 months

OR
3b. USPTO issues letter (Office action)
Within 6 months

4a. Applicant timely responds
Within 1-2 months

OR
4b. Applicant does not respond and application abandons 5a. U.S. publishes mark
Approx. 3 months

OR
5b. U.S. issues letter (Office action)
Within. 6 months

6a. Applicant timely responds / Files appeal
Approx. 1-2 months

OR
6b. Applicant does not respond and application abandons 7a. USPTO publishes mark
Approx. 3 months

OR
7b. Applicant’s appeal sent to TTAB 8. Mark registers
Between 5 - 6 yrs. Every 10 yrs.

9. Owner files Section 8 declaration

AND
10. Owner files Section 8 declaration and Section 9 renewal
This timeline does not cover every application scenario. If you find that you are well outside of the listed timeframes, call your assigned examining attorney or the Trademark Assistance Center (TAC) at 571.272.9250.

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 OGfor 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.

Section 66(a) Timeline: Application based on the Madrid Protocol
Place your mouse over the steps for more information on each step.

1. USPTO receives Request for Extension of Protection
approx. 3 months

2. USPTO reviews Request for Extension of Protection
approx. 1 month

3a. USPTO publishes mark
approx. 3 months

OR
3b. USPTO issues letter (Office action)
within 6 months

4a. Applicant timely responds
approx. 1-2 months

OR
4b. Applicant does not respond and application abandons 5a. USPTO Publishes Mark
approx. 3 months

OR
5b. USPTO Issues Final letter (Office action)
within 6 months

6a. Applicant timely responds/Files appeal
approx. 1-2 months

OR

6b. USPTO issues suspension inquiry 7a. USPTO publishes mark
approx. 3 months

OR
7b. Applicant’s appeal sent to TTAB 8. Mark registers (Certificate of Extension of Protection granted)
bet. 5 & 6 yrs. every 10 yrs.

9a. Owner files section 71 declaration

AND
9b. Owner files section 71 declaration
This timeline does not cover every application scenario. If you find that you are well outside of the listed timeframes, call your assigned examining attorney or the Trademark Assistance Center (TAC) at 571.272.9250, or the Madrid Processing Unit at 571.272.8910.

Step 1. USPTO receives Request for Extension of Protection: The World Intellectual Property Organization’s International Bureau (IB) transmits the Request for Extension of Protection (REP) to the USPTO. The actual transmission to the USPTO could be weeks or months after the applicant’s submission of the REP to its “Office of Origin.” Applicants may not request protection directly, but must file such requests through a “home country” intellectual property office. Step 2. USPTO reviews Request for Extension of Protection: The Request for Extension of Protection is examined under the same standards as any other application for registration on the Principal Register. The USPTO examining attorney determines whether U.S. law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO 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 the potential opposer. Step 3b. USPTO issues letter (Office action): If refusals and/or requirements exist, the USPTO examining attorney issues a letter (Office action, referred to by the International Bureau (IB) as a Provisional Refusal) explaining the refusals and/or requirements. This letter is sent to the IB, which forwards the action to the applicant. The refusal is either “total,” meaning it applies to all goods/services/classes, or is “partial,” meaning it applies to certain goods/services/classes. Within 6

months of the date the Office action was sent to the IB (USPTO mailing date), the applicant must submit a response to the USPTO that addresses each refusal and/or requirement in a “total” refusal. If the refusal is “partial,” and the applicant does not respond within 6 months of the USPTO mailing date, the USPTO will abandon only those goods/services/classes refused and approve the mark for publication in the Official Gazette (OG). Step 4a. Applicant timely responds: 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 the applicant’s response fails to satisfy any of the refusals and/or requirements, the examining attorney will issue an Office action making any remaining refusals and/or requirements “final.” 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. 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 in a “total” refusal, the application is abandoned. If the refusal is “partial,” and the applicant does not respond within 6 months of the USPTO mailing date, the USPTO will abandon only those goods/services/classes refused and approve the mark for publication in the Official Gazette (OG). See Step 5a USPTO publishes mark. 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. Applications with partially abandoned goods/services/classes may petition to revive within 2 months of the date of the examiner’s amendment abandoning/deleting those goods/services/classes. 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) or designate the United States for protection again in a “Subsequent Designation” of the International Registration of the mark. Step 5a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO 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 the potential opposer. Step 5b. USPTO issues final letter (Office action): The examining attorney will issue a “final” Office action directly to the applicant or applicant’s U.S. attorney. The Office action makes “final” any remaining refusals or requirements. The applicant may respond to a final Office action by (a) overcoming the refusals and complying with the requirements; (b) appealing to the Trademark Trial and Appeal Board; or (c) filing a petition to the Director in limited circumstances where review by the Director is allowed. 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, either in “total” or in “part” if specified, 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. For goods/services/classes partially abandoned after “final” refusal, such goods/services/classes are no longer part of the application. Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the “final” Office action was issued, and the action does not specifically state that certain goods/services/classes will be “allowed” (or that certain goods/services/classes will be “deleted”) if no reply is received, the entire 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) or designate the United States for protection again in a “Subsequent Designation” of the International Registration of the mark. Step 7a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO 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 the potential opposer. 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 online athttp://www.uspto.gov/trademarks/process/appeal/index.jsp. Step 8. Mark registers (Certificate of Extension of Protection granted): Approximately 3 months after the mark is published in the Official Gazette (OG), if no opposition was filed, then the USPTO issues a certificate of registered extension of protection, referred to as a U.S. registration. If an opposition was filed but it was unsuccessful, the registration issues after the Trademark Trial and Appeal Board terminates the opposition. Step 9a. Owner files Section 71 declaration: Between the 5th and 6th year after the date on which the USPTO issues the U.S. registration, or within the 6-month grace period with an additional fee, the holder of the international registration must file directly with the USPTO a Section 71 Affidavit of Use or Excusable Nonuse. Failure to file this declaration will result in the cancellation of the U.S. registration. The USPTO will then notify the International Bureau of the cancellation and

invalidation of protection in the United States. The holder of the international registration may again designate the United States for protection in a “Subsequent Designation” of the international registration of the mark. Step 9b. Owner files Section 71 declaration: Within 1 year preceding the end of every 10-year anniversary of the U.S. registration, or within the 6-month grace period with an additional fee, the holder of the international registration must file directly with the USPTO a Section 71 Declaration of Use or Excusable Nonuse. Failure to make these required filings will result in cancellation of the U.S. registration. The USPTO will then notify the International Bureau of the cancellation. In addition, to the USPTO maintenance requirements, the holder must also renew the international registration with the International Bureau every 10 years from the date of international registration (http://www.wipo.int/madrid/en/filing/renewal.html). Failure to renew the international registration will result in cancellation by the International Bureau, which will notify all designated contracting parties that protection need no longer be afforded to the mark.

Post Registration Timeline for all Registrations except Madrid Protocol-Based Registrations
Place your mouse over the steps for more information on each step.

1. Mark registers

2. Required post registration documents
Bet. 5-6 years

2a. Optional post registration documents
Anytime 5 years or more

3. Section 8 declaration
Every 10 years

4. Combined Section 8 declaration and Section 9 renewal 3a. Ownership change and Section 7(d) request for new registration certificate
And / Or

3b. Section 7(e) voluntary surrender of registrationl
And / Or

3c. Sections 7(g) and 7(h) amendment and correction of registration

4a. Section 15 declaration of incontestability
This timeline does not cover every post-registration scenario. If you need additional assistance, call the Trademark Assistance Center (TAC) at 1-800-786-9199.

Step 1. Mark registers: After a registration issues, to keep the registration “alive” or valid, the registration owner must file specific documents and pay fees at regular intervals. The deadlines for filing these documents are calculated from the registration date shown on the registration certificate. Failure to file these documents will result in the cancellation and/or expiration of your registration. The USPTO does not issue reminders of these deadlines. Go to step 2 for required post registration documents and go to step 2a for optional post registration documents. Step 2. Required post registration documents: The following documents must be timely filed to maintain a registration. Go to step 3. Step 2a. Optional post registration documents: The following documents are not mandatory to maintain a registration. For optional documents that may be filed anytime go to step 3a and for optional documents that may be filed every 5 years or more go to step 4a. Step 3. Section 8 declaration: Between the 5th and 6th year after the registration date the owner must file a Declaration of Use or Excusable Nonuse under Section 8. This declaration requires a fee. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the registration. The USPTO does not issue a reminder of these deadlines. The Section 8 declaration may be combined with an optional Section 15 declaration of incontestability. Go to step 4. Step 3a. Ownership change and Section 7(d) request for new registration certificate: An owner may transfer or assign a registered mark to a new owner. The new owner is encouraged to record the assignment with the USPTO. If the owner would like a new registration certificate, the owner must submit a separate request showing that the assignment has been recorded with the USPTO. A fee is required. Go to Step 3b. Step 3b. Section 7(e) voluntary surrender of registration: The owner of a registration may voluntarily surrender the registration, in its entirety or for a portion of the goods and/or services. No fee is required. Go to Step 3c. Step 3c. Sections 7(g) and 7(h) amendment and correction of registration: A registration owner may file a Section 7 request to amend or correct the registration at any time. The amendment may not materially alter the mark or broaden the goods and/or services. A fee is required, except for corrections due to USPTO error. Step 4. Combined Section 8 declaration and Section 9 renewal: Between the 9th and 10th year after the registration date and every 10 years thereafter, the owner must file a Combined Declaration of Use or Excusable Nonuse and Application for Renewal under Sections 8 and 9. This filing requires a fee. The filing may also be made within a 6-month grace period

after the 10th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation and/or expiration of the registration. The USPTO does not issue a reminder of these deadlines. Step 4a. Section 15 declaration of incontestability: A Section 15 declaration may only be filed for a mark on the Principal Register that has been in continuous use in commerce for a period of 5 years after the date of the registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark. “Incontestability” enhances the legal presumptions the registration receives. This declaration requires a fee.

Post Registration Timeline for Madrid Protocol-Based Registrations
Place your mouse over the steps for more information on each step.

1. Mark registers

2. Required post registration documents
Bet. 5-6 years

2a. Optional post registration documents
Anytime 5 years or more

3. Section 71 declaration
Every 10 years

4. Section 71 declaration 3a. Section 7(d) request for new U.S. registration certificate
And / Or

3b. Section 7(e) voluntary surrender of registrationl
And / Or

3c. Sections 7(g) and 7(h) amendment and correction of registration 4a. Section 15 declaration of incontestability
This timeline does not cover every post-registration scenario. If you need additional assistance, call the Trademark Assistance Center (TAC) at 1-800-786-9199.

Step 1. Mark registers: After a U.S. registration issues, to keep the registration “alive” or valid, the U.S. registration owner must file specific documents and pay fees at regular intervals. The deadlines for filing Section 71 declarations of use

and excusable nonuse are calculated from the registration date shown on the U.S. registration certificate. However, the deadlines for renewing the international registration with the International Bureau of the World Intellectual Property Organization are calculated from the international registration date. Failure to file both of these documents will result in the cancellation of your U.S. registration. The USPTO does not issue reminders of these deadlines. Go to step 2 for required post registration documents and go to Step 2a for optional post registration documents. Step 2. Required post registration documents: The following documents must be timely filed to maintain a registration. Go to Step 3. Step 2a. Optional post registration documents: The following documents are not mandatory to maintain a registration. For optional documents that may be filed anytime go to Step 3a and for optional documents that may be filed every 5 years or more go to Step 4a. Step 3. Owner files Section 71 declaration of use or excusable nonuse: Between the 5th and 6th year after the USPTO issues the U.S. registration, the U.S. registration owner must file directly with the USPTO a declaration of use or excusable nonuse. This declaration requires a fee and specimens of use. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the U.S. registration and invalidation of the extension of protection of the international registration to the United States. The USPTO does not issue a reminder of this deadline. Go to Step 4. Step 3a. Section 7(d) request for new U.S. registration certificate: The owner of a registered extension of protection to the U.S. may only request a new U.S. registration certificate for the unexpired part of the registration period after filing the appropriate change request with the International Bureau of the World Intellectual Property Organization. Any change in ownership, such as by assignment, transfer, or change of name, must first be recorded at the International Bureau (IB). The IB will notify the USPTO of any changes of ownership that affect the extension of protection to the United States, including partial changes of ownership of less than all of the goods and/or services. The USPTO will update its electronic records to reflect the change. If the owner would like a new U.S. registration certificate, the owner must submit a separate request and pay the required fee. Go to Step 3b. Step 3b. Section 7(e) voluntary surrender of U.S. registration: A U.S. registration owner may voluntarily surrender the U.S. registration, in its entirety or for a portion of the goods and/or services. No fee is required. Go to Step 3c. Step 3c. Sections 7(g) and 7(h) amendment and correction of U.S. registration: A U.S. registration owner may file a request to amend or correct the U.S. registration at any time, but only in limited circumstances where the change will affect only the extension of protection to the United States. No amendments to the mark or to broaden the goods and/or services are allowed. A fee is required, except for corrections due to USPTO error. Step 4. Owner files Section 71 declaration of use or excusable nonuse: Between the 9th and 10th year after the registration date and every 10 years thereafter, the U.S. registration owner must file directly with the USPTO a declaration of use or excusable nonuse. This declaration requires a fee and specimens of use. The filing may also be made within a 6-

month grace period after the 10th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the U.S. registration and invalidation of the extension of protection of the international registration to the United States. In addition, the international registration must be renewed with the International Bureau every 10 years from the date of international registration. Failure to file this renewal will result in the cancellation of the U.S. registration. The USPTO does not issue a reminder of these deadlines. Step 4a. Section 15 declaration of incontestability: A Section 15 declaration may be filed for a mark on the Principal Register that has been in continuous use in commerce for a period of 5 years after the date of the U.S. registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark. “Incontestability” enhances the legal presumptions the U.S. registration receives. This declaration requires a fee.