The publication period, or phase, is a required stage of the Federal trademark registration process in the United States.
In the US, as of this writing, the trademark application and registration process is a lengthy one. Currently, new trademark registration applications are initially reviewed by the US Patent and Trademark Office (USPTO) approximately 6-8 months from the date on which they are filed.
This is a long time. However, the trademark registration process at large extends well beyond that “initial examination” phase of the process.
After examination by the USPTO, the publication period is the next stage in the trademark registration process.
What Is the Trademark Registration Process Generally?
The US trademark registration process is a multi-stage process. This is true both before you file your trademark registration application—and after.
Before Filing Your Trademark Registration Application
There are a number of steps you should take before filing your trademark registration application to maximize your odds of success.
Contrary to popular belief, registering a trademark is not simply a matter of filing a form with the USPTO. Instead, it is adversarial legal process.
That is, you may start with the filing of an application with the USPTO—but you may very well end up in litigation in Federal court if you don’t do your homework first.
What is that homework?
1. Hire a Trademark Lawyer
The first that you should do is to seek out and retain an experienced Michigan trademark attorney to assist you.
A good trademark registration lawyer will do a number of things for you that you will avoid the rejection of your trademark application for easily avoidable reasons, not least of which is the possibility that someone else has already registered a trademark too close or exactly similar to yours.
The first thing that a trademark lawyer in Detroit, Livonia, Ann Arbor, or elsewhere in Michigan will do is to offer legal advice.
This is something that a discount, online, trademark form-filing web service cannot do for you. By law. Do you want to pay a few bucks to have a website file whatever random stuff you type into a form with the USPTO for you? And then wait 8 or more months with your new business’ brand hanging in the balance to find out if you, a non-lawyer, magically typed in the exact write content?
Online webform filing services are for you, then.
For the rest of you, who may be serious entrepreneurs or working to properly launch a start-up with an understanding that your brand is your business, you may want some expert assistance. A business does not exist without a brand that can be enforced against infringers in Federal Court.
Serious entrepreneurs protect their trademarks and other intellectual property as a necessary start-up expense.
They hire trademark attorneys who can tell them if their proposed business name, product name, logo, or slogan is problematic from the get-go. They will tell you why or why not, based on a thorough understanding Federal trademark law and based on hard-won and earned experience.
Trademark lawyers make sure that you name or log can be registered as a trademark before filing an application.
A low-cost website will just take your money and file … whatever.
2. Pre-Application Trademark Clearance Search
How does a trademark attorney ensure that your name or logo can be registered?
Your Michigan trademark attorney will conduct, first, a pre-filing, comprehensive trademark clearance search.
This will not be the simple Google or USPTO TESS database search that you would run yourself. An experienced trademark attorney will utilize the services of a professional, third-party search service to thoroughly scour the US Principal and Supplemental Trademark Registries. In addition, your attorney will search Michigan and other state trademark registries, business entity formations across the US, domain name ownership, internet, web, social media conflicts, and more.
This is necessary because, under US law, the right to exclusive use and ownership of a trademark belongs to the person who has used it interstate commerce the longest. Not just to the person who has first filed a trademark registration application.
Your attorney will ensure that there are no past, present, or future possible likelihood of confusion conflicts. He or she will draft you a detailed opinion as to the viability of your proposed business name, product name, slogan, or logo, before you go to the trouble of spending money and time on a fruitless application.
You will have the opportunity to move forward, if you elect to do so, on an educated basis.
3. Drafting, Reviewing, and Approving Your Trademark Registration Application
Your trademark attorney will, further, properly draft your trademark registration application to avoid any common trademark application errors.
When drafted by a good lawyer, your trademark registration application will properly disclose your dates of first use, your filing basis, and properly describe your products or services.
In other words, your application will be optimized to resolve many USPTO objections before they are raised.
After Filing: The Path to Your Publication Period
Once your trademark registration is filed, you will do a whole lot of nothing for 6-8 months.
Initial Trademark Registration Application Examination
The USPTO will review your application—eventually.
This initial examination will be conducted by an individual USPTO attorney known as an Examiner. The Examiner will review your application for issues and file Office Actions (refusals) if any are spotted.
A filed Office Action is not the end of the road for your trademark registration process, however. If you didn’t have a trademark lawyer working for you before, however, you will need once if you want to overcome the refusal.
Only a US attorney licensed in Michigan or another state can represent you before the USPTO with regard to any Office Action refusals filed.
Your discount form-filing website? Long gone at this point.
If you haven’t retained an attorney, return to Step 1, above, and get one.
Your Office Action refusals will either be resolve or they won’t, in any case. If not, your trademark registration process ends here, prior to the Publication Period.
If they are resolved, the USPTO Examiner will issue an “Approval for Publication” (Period) Notice.
The Publication Period: At Last We Arrive!
Given the (new) 3-month deadline to respond to Office Actions, quite a lot of further time may elapse before your application clears the Examination Period. When it finally does, you will know it because your Examiner will file an “Approval for Publication.”
This means that the Examiner is done arguing with you—for now. (It can still happen later, but those occasions are outside the scope of this Article.)
It does not necessarily mean that you are done arguing with anybody, however. Third parties, including other trademark registration owners (“registrants”) still get the opportunity to oppose your application’s final registration.
This is what the Publication Period is for.
The Publication Period is a 30-day period of time in which third parties have the opportunity to file a pleading called an “Opposition” with the USPTO’s Trademark Trial and Appeals Board (TTAB).
When an Opposition is filed, you have a 30-day period of time to respond. If you do respond prior to this deadline, you are engaged in Federal litigation that follows, more or less, the same process as any Federal civil litigation. This will include the issuance of scheduling orders, a period for discovering, evidentiary and other motion and brief drafting and filing, and so on.
Eventually, it will result in an order favoring one side or another, at great cost to both in terms of attorney’s fees and USPTO filing fees.
Negotiation and settlement is always possible. For a successful resolution to any Opposition proceeding, experienced legal counsel is necessary.
After the Publication Period: Approval for Registration
If there are no Oppositions filed, the Publication Period ends 30 days after it begins, and the road to final registration begins.
If Oppositions are filed, the window for the filing of additional Oppositions closes after 30 days, but the next step in the trademark registration process will not occur until the filed Opposition is resolved.
That next step in the process is the issuance of an “Approved for Registration” notice or the issuance of your registration certificate. An Approval for Registration is filed when your trademark registration application was filed on an “intent to use” basis rather on an “in-use” basis.
- An intent-to-use application is one that is filed prior to the bona fide use in commerce by the applicant.
- An in-use application is one that is filed after the mark is used in interstate commerce.
If your application is an intent-to-use application, you will have 6 months from the date of issuance of the Approval for Registration notice after the Publication Period to file a Statement of Use. The Statement of Use includes a “Specimen” evidencing the use in commerce of the business or product name, slogan, or logo.
The Trademark Registration Publication Period: A Bottom Line
The bottom line is that, if you are unclear about what the Publication Period is or what can happen during this phase of the trademark registration process, you need to retain an experienced Michigan trademark attorney to assist you.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
Additionally, we also have nearly 20 years of experience representing Michigan bankruptcy clients.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.