Section 44(e) timeline

Application based on your foreign registration

Place your mouse over the steps for more information.

1. Application filed
About
3 months
2. USPTO reviews application
About
1-2 months
line
8. USPTO registers your trademark
Between
5 - 6 yrs.
Every
10 yrs.
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. Application filed. You file a U.S. application and rely on ownership of a foreign registration for the same trademark and same goods and/or services. The foreign registration does not have to be included in your U.S. application, but must be submitted before registration. The foreign registration must be issued by a country that is a party to a treaty or international agreement with the United States. The foreign registration must also be from your country of origin, must be owned by you, the same named applicant who filed the U.S. application, and must be for the same trademark as in the U.S. application and for goods and/or services that are the same as or encompass the goods and/or services in the U.S. application. 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 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 8.

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. We do not suspend review of your application to wait for you to submit a copy of the foreign registration certificate except under extraordinary circumstances (e.g., war or natural disaster). 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 5a or step 5b.

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 5a. 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 8.

Step 5b. USPTO issues final letter (office action). If your response does not overcome all refusals and/or satisfy all requirements, the examining attorney will issue a “final” refusal letter (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 6a or step 6b.

Step 6a. 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 7a or step 7b.

Step 6b. You do not file an appeal or fix remaining issues 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 7a. 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 8.

Step 7b. 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 8. 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 9 or every 10 years go to step 10.

Step 9. 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 10. 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.