TRADEMARK GUIDE &QUESTIONNAIRE
After an application is filed, it will undergo several stages of examination at the USPTO. As a result, the time for completion of
a registration, from the time of the application filing and through the receipt of the Certificate of Registration, varies. This time
period may be as short as seven months in an application where no substantive issues are raised, to as long as 18 months, or
longer, in an application where either the USPTO, or a third-party raises objections to registration
4. Application Examination. Following the filing of the application, it will go through several stages of examination and other
procedures at the USPTO, before registration may be issued. Although the costs during this stage of the registration process
may be as low as $470, the total costs depend on the actions taken by the USPTO, and the Program’s corresponding response.
a. Initial review by the USPTO Trademark Examining Attorney and subsequent USPTO review: Approximately three to
four months after the application is filed, it will be reviewed by an USPTO Trademark Examining Attorney. If the
Examining Attorney determines that the mark is eligible for registration and that the application does not require any
amendments, the USPTO will approve the mark for publication. However, if the Examiner determines that the mark
cannot be registered and/or that an amendment(s) to the application must be entered, s/he will telephone and/or
send correspondence to the University’s outside trademark counsel explaining the reasons for refusals and/or stating
other requirements. The USPTO’s written communications may be in the form of a “Notice of Suspension,” a “Priority
Action,” an “Office Action” or an “Examiner’s Amendment.” The USPTO may issue more than one letter of action – of
the same or a different type (raising new, or restating previous, issues and/or requirements) – in a single application.
The USPTO may issue letters of action at various stages of the registration process, including following the initial
review, before or after publication, or during the final examination immediately preceding the issuance of the
Certificate of Registration.
i) Attorney fees for analyzing each USPTO telephone inquiry or written letter of action, and preparing
a blueprint for how to respond to the USPTO: $475;
ii) Submitting each Response to a USPTO inquiry or letter of action, if the Program decides to respond
following receipt and review of the blueprint for Response:
1. Response complying with USPTO technical requirements: $850; examples of technical
requirements include requests for entry of a disclaimer, submission of a substitute specimen of use,
submission of a new mark image, and revisions to the classification or the description of the
products or services, or to the description of a logo; and/or
2. Response arguing against USPTO’s refusal of registration: $2,500; the USPTO may refuse
registration on “statutory grounds” – as when the USPTO finds the mark to be similar to a mark in
the USPTO records or to be merely descriptive, but the USPTO may also refuse registration for non-
compliance with technical requirements.
b. Petition to Revive. The USPTO allows six months to respond to most of its communications. In the event that a
Response cannot be timely submitted to the USPTO, the application will become abandoned. In certain
circumstances, a petition to “revive” the application may be filed with the USPTO, within 60 days of the Notice of
Abandonment; this petition must be accompanied by a substantive response to the USPTO’s requirements:
i) USPTO filing fees for a Petition to Revive: $100; and
ii) Attorney fees for preparing and filing a Petition to Revive (apart from and in addition to the fees
related to the preparation of the Response): $275.
5. Publication. If the mark is approved for registration, it will be published in the Official Gazette, for a period of 30 days, to allow
any third parties who believe they may be damaged by this registration, to oppose it; attorney fees for reviewing, confirming
and reporting a Notice of Publication: $235.