Free Form Entry

Free Form Entry

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During the application process an applicant has the option on whether or not to make a free form entry of the description of goods or services or to utilize the US acceptable identification of goods and services manual.  Free form entry is not recommended for novice trademark practitioners and should therefore be used only by experienced trademark attorneys.  For the purposes of this article, filing descriptions through use of the goods and services manual through the electronic process is mandatory.  It is strongly recommended that students view the USPTO “Goods and Services” video.^[1]See, e.g., http://www.uspto.gov/trademarks/process/TMIN.jsp.

Once the application is filed, it typically takes 3 to 6 months for substantial review of the application by an Examining Attorney at the PTO. Upon substantial review of the application by the USPTO, the trademark application will either be published if found to be acceptable or an office action will be issued by the PTO against the application.  If an office action is issued, the applicant must submit a response to the USPTO within six months.  Eventually the requirements of the USPTO must be met or the mark will not proceed to approval for registration.  If alternatively, the mark is approved for publication, it will be published in the U.S. Trademark Gazette for a period of not less than 30 days.  During this 30 day period, any owner of a trademark who finds the application to be confusingly similar to a mark they own may file an opposition action against registration of the mark. 

If an opposition action is filed, it will be processed through the Trademark Trial and Appeal Board (“TTAB”) which is an administrative proceeding akin to federal litigation, except that there are no personal appearances of counsel before the TTAB.  This litigation process includes oral and written discovery and motion practice.  If alternatively, no oppositions to the application are filed, a notice of allowance (“NOA”) will be issued by the USPTO advising the trademark applicant that the mark is subject to registration, conditioned on filing of the statement of use (“SOU”) in interstate commerce.  Upon issuance of a NOA, an applicant has six months to file the SOU for each of the listed categories contained in the application.  It is critical that this deadline, and all other deadlines be calendared by the applicant to prevent the application from being declared abandoned.

Any goods or services not put into use by the applicant should be deleted prior to filing the SOU with the USPTO, as the SOU requires a statement under penalty of perjury that the applicant has put ALL of the claimed goods and services into use as of the date of the SOU.  Prior to expiration of the six month period, an applicant may file a total of five additional requests for extension of time to file a SOU expanding the total period of time to file a SOU after issuance of a NOA to three years.  If a SOU is not filed within this extension period, the USPTO will issue a Notice of Abandonment.