An Amazon Seller Needs to Know What Happens With a Trademark Registration Application (Already in Commerce)

Preparation and submission of the application are naturally one of the most important stages. It takes about a week or two, depending on circumstances (the result of TM research or preparing a photo of the goods). Then we are waiting for a phase of 7-9 months, which also has interesting things that require decisions.

Registration of the Brand Registry account.
After the Filing Receipt, the first thing we do is register BR. To do this, we wait for 3-5 days until the TM appears in the registry. The date of this event can be seen in the Status date on the TSDR. Additionally, we wait another 48 hours. Otherwise, the brand registration system will throw you a message: “You need to wait 48 hours until your trademark will be indexed by Amazon”.

GTIN connection.
BR account is registered, so it’s time to get a GTIN. GTIN (Global Trade Item Number) – is a global trade item number in the unified international goods database GS1. When you get this number you will be able to create listings without EAN/UPC codes. Specifically, you will need to select GTIN instead of UPC codes and leave the field blank.

Getting the TM
A stage that comes with more of a wait. But also, after the appointment of an expert, a USPTO attorney often requires certain actions.

Once the USPTO determines that the minimum filing requirements are met, the application is given a serial number, and the application is submitted to the examining attorney. This can take several months as the search for conflicting marks goes on, and the completed application is reviewed.

If the attorney decides that the mark should not be registered, he will send a letter (office action) explaining the reasons for the rejection and the shortcomings of the application. There is an opportunity and 6 months’ time to file a response to the Office action. To do this, you must gather all the arguments for why you think TM is eligible for registration. Importantly, all arguments must be supported by references to legal acts. Properly preparing an answer will help a lawyer.

If minor changes are necessary, for example, a different logo or address, your lawyer can contact you or the lawyer who filed the application by mail or phone.

Publication for the Opposition
So, we finally went through all the steps and received the Official USPTO Notification of Notice of Publication letter that a publication was scheduled for a certain date in the Official Gazette. Again, the Official USPTO Notice of Publication Confirmation will come on the day of publication that the TM has already been published.

Now any party who believes a mark registration may be prejudicial to it has 30 days from the date of publication to file either an opposition to registration or a request for an extension of time to file an opposition. The opposition is similar to proceedings in federal court but is heard before the Trademark Trial and Appeal Board (TTAB), an administrative court under the USPTO.

If no objection is filed or if the objection is not granted, the application moves on to the next step.

Obtaining a certificate of registration
It may take three to four months from the time the notice of publication is sent before the applicant receives official notification of the next application status. During this time, you should continue monitoring your application’s status through the TSDR system. Next, a certificate of registration will arrive in the mail.

As you can see, the registration process is quite exciting, not just at the application stage. We at Solver will help you every step of the way, so we look forward to seeing you through the Contact Us button!