During the registration process, the trademark owner has the responsibility of monitoring the status of their trademark regularly. The registration process takes around eight to ten months, and by being updated on the process, you will ensure an efficient and timely approval of your application. Failing this step can highly likely result in a delay in your process and your application might even be declared abandoned.
This blog has summarized all the steps you need to take for efficient trademark monitoring. Continue reading to find out!
What is TSDR?
Trademark status, as the name indicates, pertains to the progress of your trademark application with the United States Patent and Trademark Office (USPTO). Applicants do so by using the USPTO’s Trademark Status & Document Retrieval (TSDR) tool – a trademark database containing real-time updates on status and documents associated with pending and approved trademark applications, such as application filing dates, examination history, and registration certificates. Users can use the tool to print and download any relevant information they require from this database. The filing dates and examination history help the users keep track of their applications and prevent the risk of abandonment. Not only this, users can use the database to check on their international filings and registrations under the Madrid Protocol, if any.
How to track the Trademark Status?
Trademark holders are given a receipt for their application containing the registration number, reference, or serial number for their application which they can enter in the TSDR to retrieve their application. Besides viewing and downloading any document uploaded by the USPTO on this site, you can also acquire information such as ownership of a particular trademark, prosecution history for an application, goods and services associated with a trademark, as well as general or trademark-specific information.
For pending applications, you should ideally check the status every three to four months. After its approval, you should keep updated on the status every two to three months so that you are on board with any third-party attempts of opposition or cancellation of your registration.
If your application is being handled by a trademark attorney, then you should check in with them regarding the status.
Why is it Important to Check the Status of your Trademark Registration?
The importance of checking the status of a trademark application or registration is quite clear thus far in the blog. We will now see how this exercise helps in trademark-related issues such as office action and opposition.
When you send in your application, an examining attorney is assigned by the USPTO for your application which reviews the information contained in it. After the initial review, if the examining attorney deems any more information to be necessary, they will issue an “Office Action“. For this, you are required to submit a response within three months. Failing to do so on time would result in the abandonment of your application. If you require more time, then you can acquire an extension of an additional three months by paying a certain amount. This has to be done before the initial deadline.
After your application is approved, a 30-day opposition period is assigned to the registration which allows third parties to oppose your trademark registration. All of the oppositions received for your mark would be highlighted in your trademark status.
What are the different Trademark Statuses?
The process of checking your trademark status with the TSDR might appear simple, but what is more important to understand is the meaning of those statuses and how they matter within the registration process. Following are the common ones you would encounter during the registration process:
Under Examination
This indicates that your application has been assigned to an examining attorney by the USPTO. This would be your status for around four months.
Office Action Issued
As explained above, if the examiner requires any information which is lacking within the application or identifies any problem with your trademark such as similarity with a registered trademark, they will issue an office action. You have to promptly respond to it to avoid abandonment.
Published for Opposition
After fulfilling the requirements of the office action or if no such action was issued in the first place, then your mark is published in the journal and you receive this status on your TSDR. As mentioned before, the mark is published for 30 days during which opposing parties can contest the registration.
Notice of Allowance
If a mark receives no opposition within the stipulated timeframe, a Notice of Allowance is issued which means that the mark is allowed for registration but is not registered yet. A six-month period is assigned during which the owner has to submit a Statement of Use, or they can file a request for a six-month extension in filing the Statement of Use.
Abandoned/Dead
An application is rendered as “dead” or ”abandoned” if the filing deadlines for any of the above-required documentation are not met. On receiving this status, a mark is no longer under protection from use by another person.
Registered
This status is self-explanatory. Your mark is now registered and is now under the protection of the IP laws for you to freely use it for your business.
What Should You Do Now?
Checking the status of your trademark application is imperative to the entire application process, and based on the above-discussed factors, it cannot be emphasized enough. Seeking the services of a trademark attorney who can interpret the status of your application is a suitable option in this regard since they will not only give you legal advice but also carry out the necessary actions for your application such as conducting a trademark search, filing the relevant documents required by USPTO, following up on your application process till it achieves the registration status, and even afterwards. You can book a free consultation today with Drishti Law to learn how our experienced principal attorney can help you successfully monitor your trademark. We provide a variety of services which can meet the specific legal needs of your brand.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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