What happens when my application arrives at the PTO?

• When the Patent and Trademark Office (PTO) receives an application, it is given a number.
• A clerk PTO will look through the materials you have sent to make sure that you have included all the required items, like the drawings or the filing fee.
• The PTO then will classify the application by determining what goods or services are involved and putting the application into the appropriate category according to its classification system.
• The clerk will send you a receipt acknowledging that the PTO has received your filing.
• You might not hear anything more from the PTO for three months.

What are they doing while I'm waiting?

• A trained examiner, a lawyer working for the PTO, will review your application and decide whether it is complete and consistent.
• The examiner will decide whether your mark qualifies for registration.
• The examiner will decide whether your mark contains any common or generic words that you cannot claim as your own.
• If the examiner determines that the application has any problems, you will be informed so you can provide corrections.
• If you application is okay, it will be published in the PTO's Official Gazette.
• The PTO will wait to see whether anybody objects to your application.
• If nobody objects within the allowed time and if you are already using the mark, the PTO will register the mark. If you did not start using the mark, the application will be registered once you establish that you are actually using it.

What if somebody objects?

• If somebody objects to your mark, you'll have to hire a trademark lawyer to help you get the mark registered or help you resolve a dispute with the entity that objected.

What if the PTO examiner rejects my application?

• Problems relating to the form of the application, such as how precisely you have described the mark, or whether your drawings are adequate, will be pointed out on a form filled out by the examining lawyer. The form will instruct you about what your response must contain.
• The rejection form will tell you how much time you will have to respond; if you don't respond on time, the PTO will conclude that you have abandoned the application and you will have to start over.
• If the examiner rejects your application for a substantive reason, such as a determination that your mark is confusingly similar to somebody else's or that it is merely descriptive, you will want to consult with your trademark lawyer before responding.
• A substantive rejection may indicate that there may be an adversarial dispute about your mark. Again, you will want to consult your trademark lawyer about this.
• The PTO may then rule on the application and may reject it. Your attorney can help you decide whether to appeal this ruling and where you should present your appeal. An appeal may be presented to the administrative appeals board, referred to as the Trademark Trial and Appeal Board (TTAB), or you can file an action in federal court. Your lawyer will be able to explain the advantages and disadvantages of each option, tell you what is involved (including the estimated time and cost). Your lawyer can also advise you of your options if your first appeal is unsuccessful.
• If your application is rejected on the basis that it is merely descriptive, you might register your mark on a different list, referred to as the Supplemental Register. After five years you can ask to have the mark moved to the Principal Register. You can also ask to have the mark moved if you can establish that your mark has acquired a secondary meaning, so that when people see it or hear it, they think of your product.