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Saturday, December 5, 2009

E. What Happens Next

If you filed a "use" application, you will likely receive some communication from the PTO within three to six months. If there is a problem with your application, you will receive what's called an "action letter." This is simply a letter from your examiner explaining what the problems are. Most problems can be resolved with a phone call to the examiner.
When the examiner approves your application for publication, you will receive a Notice of Publication in the mail. Your mark will then be published in the Official Gazette (a PTO journal) for 30 days. During that time, anyone may oppose your registration. Only 3% of all published marks are opposed, so it is very unlikely you will run into trouble.
Once your mark has made it through the 30-day publication period, you will receive a Certificate of Registration. The PTO has lately had a difficult time moving applications through this long process. As a result, it may take a year or more to process your application.
If you filed on an "intent to use" basis, you will need to file an additional document with the PTO when you start using your domain name. This document is called "Statement of Use/Amendment to Allege Use for Intent-to-Use Application." It tells the PTO the date you started using the domain name and completes the registration process. You must also provide a specimen at that time, showing how you are using the domain name.
Down the road, you will need to do a few things to keep your registration in force. For example, between five and six years after the mark is first registered, you'll need to file a document stating that you are still using the mark. And your registration must be renewed every ten years; otherwise it will be automatically cancelled.
TipThe Trademark Registration Kit, by Patricia Gima and Stephen Elias (Nolo), is helpful if you encounter any questions or problems with the trademark examiner during the processing of your trademark application. It also explains how to fill out and file the follow-up document if you file your application on an "intent to use" basis. It also shows you how to maintain your trademark and keep it registered through the years.

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