Section 44(d) timeline

Application based on a foreign application

Place your mouse over the steps for more information.

This timeline does not cover every scenario. If you are well outside the timeframes, call your assigned examining attorney at the phone number on the office action, or contact the Trademark Assistance Center (TAC) at 571-272-9250 (press 0), toll-free at 1-800-786-9199 (select option 1), or email TrademarkAssistanceCenter@uspto.gov.

Step 1. U.S. and foreign applications filed. You file a U.S. application with the USPTO within six months of filing a foreign application for the same trademark and same goods and/or services in a country that is party to a treaty or international agreement with the United States. Your country of origin must also be a party to a treaty or international agreement with the United States. However, the foreign application does not have to be from your country of origin unless it is also being used for a Section 44(e) basis (based on a foreign registration for the same trademark and goods and/or services). Section 44(d) alone does not provide a basis for registration so you must also provide a valid basis under Section 44(e) and/or Section 1. Most people who apply for a trademark based on a foreign application will also claim the Section 44(e) basis for registration. This timeline assumes a Section 44(e) registration basis. In about three months go to step 2.

Step 2. USPTO reviews application. If your U.S. application meets the filing requirements, it’s given a USPTO serial number. Your application is assigned to an examining attorney, who reviews it to determine whether federal law permits registration of your trademark. Filing fees are generally not refunded, even if the application is later refused registration. In about one month go to step 3a or step 3b.

Step 3a. USPTO issues suspension letter. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, he or she issues a suspension letter stating that no further action will be taken on the application until we receive the foreign registration certificate, as required for a Section 44(e) registration basis. Go to step 5.

Step 3b. USPTO issues letter (office action). If the examining attorney finds grounds for refusing to register your trademark, or if your application does not satisfy all legal requirements, the examining attorney issues a letter (office action) explaining those refusals and/or requirements. You must respond to the office action within six months of the date it was issued. Within six months go to step 4a or step 4b.

Step 4a. You submit a timely and complete response to the office action. To avoid abandonment of your application, you must timely submit a response that overcomes each refusal and/or satisfies each requirement in the office action. The examining attorney will review your response. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go to step 5.

Step 4b. You do not respond and your application abandons. If you don’t respond within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 5. U.S. application is suspended. The examining attorney issues a letter suspending action on the application until we receive the foreign registration certificate and restating any refusals and/or requirements. You do not need to respond to the suspension letter, but you should check the status of your U.S. application every three to four months using the TSDR database. Your U.S. application is suspended until the examining attorney issues a letter inquiring about the status of the foreign application. In about six months go to step 6.

Step 6. USPTO issues suspension inquiry letter. If we have not received the required foreign registration certificate for the Section 44(e) basis, the examining attorney will issue a letter inquiring about the status of the foreign application (whether it has registered yet). A suspension inquiry letter will be issued every six months until you submit the foreign registration certificate. For information on how to respond to a suspension inquiry letter, see our webpage on responding to office actions, and our video, “Response to Office Action.” Within six months go to step 7a or step 7b or step 7c.

Step 7a. You submit a timely response but do not submit the foreign registration certificate. To avoid abandonment of your application, you must submit a timely response specifying the status of the foreign application. If the foreign application is still pending, the examining attorney will issue you a letter re-suspending the U.S. application. Go to step 5.

Step 7b. You submit a timely response as well as the foreign registration certificate. When we receive the foreign registration certificate, the examining attorney takes your U.S. application out of suspension and reviews the foreign registration to determine if the trademark, owner, and goods and/or services are the same as those in your U.S. application. In about one to two months go to step 8a or step 8b or step 8c.

Step 7c. You do not respond and your application abandons. If you don’t respond within six months of the date the suspension inquiry letter was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive information sheet and our video, “Petitions.”

Step 8a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 11.

Step 8b. USPTO issues final letter (office action). If the foreign registration certificate is acceptable, but you have not yet overcome the refusals and/or satisfied the requirements raised by the examining attorney, the examining attorney will issue a “final” office action that makes final any remaining refusals and/or requirements. You may appeal the examining attorney’s decision by filing an appeal with the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter that overcomes the remaining refusals and satisfies the remaining requirements. And in limited circumstances you may file a petition to the Director. For more information on appeals, visit the TTAB webpage and see our video, “TTAB.” Within six 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) stating why. You must respond to the office action within six months of the date it was issued. Within six months go to step 8c-1 or step 8c-2.

Step 8c-1. You submit a timely and complete response to the office action. To avoid abandonment of your application, you must timely submit a response that overcomes each refusal and/or satisfies each requirement in the office action. The examining attorney will review your response. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go to step 8c-1a or step 8c-1b.

Step 8c-2. You do not respond and your application abandons. If you don’t respond within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 8c-1a. USPTO issues final letter (office action). If the foreign registration certificate is acceptable, but you have not yet overcome the refusals and/or satisfied the requirements raised by the examining attorney, the examining attorney will issue a “final” office action that makes final any remaining refusals and/or requirements. You may appeal the examining attorney’s decision by filing an appeal with the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter that overcomes the remaining refusals and satisfies the remaining requirements. And in limited circumstances you may file a petition to the Director. For more information on appeals, visit the TTAB webpage and see our video, “TTAB.” Within six months go to step 9a or step 9b.

Step 8c-1b. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 11.

Step 9a. You file an appeal and/or submit a timely and complete response to final letter. To avoid abandoning your application, you must timely file a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). You may also submit a response to the final letter (office action) to the examining attorney, who will review it to see if it overcomes all final refusals and/or satisfies all final requirements. If not, and you did not file a Notice of Appeal, your application will be abandoned and your trademark will not register. In this situation, filing fees are not refunded. For information on how to respond to an office action, see our webpage on responding to office actions, and our video, “Response to Office Action.” In about one to two months go to step 10a or step 10b.

Step 9b. You do not respond to final letter and your application abandons. If you don’t respond within six months of the date the office action was issued, your application is abandoned. After the six months, we send you a Notice of Abandonment. We can no longer process your application and your trademark will not register. In this situation, filing fees are not refunded. To restart the processing of your application, you must file a petition to revive the application within two months of the date the Notice of Abandonment issued. You must also submit the petition fee. If the petition is filed later than two months after the abandonment date, the petition will be denied as untimely and your only option is to file a new application with new fees. For information on filing a petition to revive your application, see our petition to revive information sheet and our video, “Petitions.”

Step 10a. USPTO approves trademark and publishes it for opposition. If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved. In about three months go to step 11.

Step 10b. TTAB processes your appeal. If your response does not overcome all final refusals and/or satisfy all final requirements and you filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be processed and instituted by the TTAB. For more information on appeals, visit the TTAB webpage and see our video, “TTAB.”

Step 11. USPTO registers your trademark. Within about three months after your trademark publishes in the Trademark Official Gazette, if no opposition was filed, we register your trademark. If an opposition was filed but was unsuccessful, we will register your trademark after the Trademark Trial and Appeal Board dismisses the opposition. After your trademark registers, you must periodically file maintenance documents and fees within specific time frames to keep the registration active. For information on keeping your registration active, as well as the optional Section 15 filing to enhance the legal strength of your registration, see our video, “Post-Registration Issues.” Between five to six years go to step 12 or every 10 years go to step 13.

Step 12. You file a Section 8 declaration. Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, you must file a Declaration of Use or Excusable Nonuse under Section 8 and pay applicable fees. This declaration must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled.

Step 13. You file a Section 8 declaration and Section 9 renewal. Within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, you must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 and 9 and pay applicable fees. This declaration generally must include a verified statement that your trademark is in use in commerce, along with evidence showing that use, and the renewal is a statement requesting that the USPTO renew your registration. If you don’t file this combined declaration, your registration will be canceled and expire.