Trademark owners sometimes hear that their mark will be “published” and assume this happens after registration. For most federal trademark applications, however, publication occurs before the USPTO issues the registration. It is an important step between approval by the examining attorney and final registration.
Publication gives the public notice of the pending registration and provides a limited period for certain parties to respond. If no one successfully challenges the application and you have satisfied the remaining requirements, the application will proceed. In my practice, I guide clients through publishing a trademark before registration.
What Does It Mean to Publish a Trademark?
Publication means the United States Patent and Trademark Office (USPTO) places an approved trademark application in its Trademark Official Gazette. This step gives notice to the public that a proposed mark has met all other requirements and will register unless a party objects within the 30 days of the publication period, but it doesn’t mean your trademark is officially registered. Rather, it generally means the examining attorney has reviewed the application and found no remaining issue that prevents it from moving to the next stage. This published information can include the trademark itself, the applicant’s name, and the goods or services covered by the application.
When Does the USPTO Publish a Trademark?
Publication of a trademark occurs before registration, following a review by the USPTO examining attorney. Before reaching this point, the examining attorney checks whether the application meets federal registration requirements. It’s not uncommon for examiners to identify problems during that review. For example, the examining attorney can raise concerns about the identification of goods or services, the specimen, or whether another registered trademark creates a likelihood of confusion.
What Happens During the Publication Period?
Publication starts a limited period where certain parties can formally respond to the proposed trademark registration. If no one takes action and the application otherwise meets federal requirements, it can continue toward the next stage. For many business owners, nothing needs to change about the day-to-day use of the mark during this period. However, trademark publication also doesn’t guarantee registration. What happens afterward depends partly on the filing basis you selected when you submitted the application.
What Happens After a Trademark Is Published?
The next step depends on whether you were already using the trademark in commerce when you filed, or if you applied based on an intent to use the mark later.
Applications Based on Current Use
If you filed based on use-in-commerce and satisfied the applicable requirements, the application can generally proceed toward registration after publication. The USPTO will eventually issue a registration certificate if the application completes the remaining process successfully.
Intent-to-Use Applications
The process works differently if you filed before using the trademark in commerce, because publication doesn’t eliminate the requirement to establish qualifying use. Next, you’ll need to establish qualifying use of the trademark and submit the required documentation before the USPTO can register the mark.
What Should You Do After Your Trademark Registers?
Registration is not the end of the federal trademark process, as you’ll need to continue using the mark as required and file maintenance documents with the USPTO at specific points to keep the registration active. It’s helpful to remember that changes to your business can also affect your trademark strategy. A startup may add new products, a restaurant may begin selling branded packaged goods, or an e-commerce company may expand into a new product category.
Learn How an Attorney Can Help with Publishing a Trademark Before Registration
As a trademark lawyer, I help entrepreneurs, small businesses, startups, and inventors nationwide with the federal trademark registration process. With my extensive experience, I can put you in a position to avoid unnecessary mistakes. Reach out to discuss questions about the trademark application process..