What is the process and timeline for applying for a trademark in the U.S. based on a foreign application under Section 44(d) in the USA?

Step 1. Application filed: The applicant must file the U.S. application within 6 months of filing a foreign application in a country that has a treaty with the U.S. The foreign application does not need to be from the applicant's country of origin. Section 44(d) alone is not enough for registration; a Section 1(b), 1(a), or 44(e) basis is needed later. Approximately 3 months to step 2.

Step 2. USPTO reviews application: If the U.S. application meets minimum requirements, it is assigned to an examining attorney to check if it can be registered under federal law. Filing fees are non-refundable. Approximately 1 month to step 3a or 3b.

Step 3a. USPTO issues suspension letter: If no issues are found, a letter is issued suspending action until the foreign registration certificate and translation are submitted. Proceed to step 5.

Step 3b. USPTO issues a letter (Office action): If issues are found, a letter is issued. The applicant must respond within 6 months. Within 6 months to step 4a or 4b.

Step 4a. Applicant timely responds: To avoid abandonment, the applicant must respond to the Office action. The application is then suspended pending the foreign registration certificate. Check status every 3-4 months. Within 1 to 2 months to step 5.

Step 4b. Applicant does not respond and application abandons: If no response within 6 months, the application is abandoned. To continue, a petition to revive must be filed within 2 months of abandonment. If more than 2 months, a new application is needed.

Step 5. U.S. application suspended: No action needed except periodic status checks every 3-4 months. The application remains suspended until a status inquiry is issued. Approximately 6 months to step 6.

Step 6. USPTO issues suspension inquiry: If the foreign registration certificate is not submitted, a status inquiry is issued every 6 months until it is submitted. Within 6 months to step 7a, 7b, 7c, or 7d.

Step 7a. Applicant timely responds and does not submit foreign registration certificate: The applicant must respond with the status of the foreign application. If still pending, the U.S. application is re-suspended. Return to step 5.

Step 7b. Applicant timely responds and submits foreign registration certificate: Once submitted, the U.S. application is reviewed to ensure consistency with the foreign registration. Approximately 1 to 2 months to step 8a, 8b, or 8c.

Step 7c. Applicant changes Filing Basis: The applicant can change the filing basis to "Actual Use" or "Intent to Use," retaining the foreign filing date priority. Additional fees apply.

Step 7d. Applicant does not respond and application abandons: If no response within 6 months, the application is abandoned. A petition to revive must be filed within 2 months of abandonment. If more than 2 months, a new application is needed.

Step 8a. USPTO publishes mark: The mark is approved for publication in the Official Gazette. After a 30-day opposition period, if no opposition, proceed to step 11. Approximately 3 months.

Step 8b. USPTO issues final letter (Office action): If issues remain, a final Office action is issued. The applicant must respond or appeal within 6 months. Within 6 months to step 9a or 9b.

Step 8c. USPTO issues letter (Office action): If the foreign registration is not acceptable, a letter is issued. The applicant must respond within 6 months. Within 6 months to step 8c-1 or 8c-2.

Step 8c-1. Applicant timely responds: The applicant must respond to avoid abandonment. The response is reviewed. Approximately 1 to 2 months to step 8c-1a or 8c-1b.

Step 8c-2. Applicant does not respond and application abandons: If no response within 6 months, the application is abandoned. A petition to revive must be filed within 2 months of abandonment. If more than 2 months, a new application is needed.

Step 8c-1a. USPTO publishes mark: The mark is approved for publication in the Official Gazette. After a 30-day opposition period, if no opposition, proceed to step 11. Approximately 3 months.

Step 8c-1b. USPTO issues final letter (Office action): If issues remain, a final Office action is issued. The applicant must respond or appeal. Approximately 3 months to step 11.

Step 9a. Application timely responds / Files appeal: The applicant must respond to the final Office action or file an appeal. If issues remain, the application is abandoned unless appealed. Approximately 1 to 2 months to step 10a or 10b.

Step 9b. Applicant does not respond and application abandons: If no response within 6 months, the application is abandoned. A petition to revive must be filed within 2 months of abandonment. If more than 2 months, a new application is needed.

Step 10a. USPTO publishes mark: If issues are resolved, the mark is approved for publication in the Official Gazette. After a 30-day opposition period, if no opposition, proceed to step 11. Approximately 3 months.

Step 10b. Applicant's appeal sent to TTAB: If issues remain and an appeal is filed, it is forwarded to the Trademark Trial and Appeal Board.

Step 11. Mark registers: If no opposition, the mark registers approximately 3 months after publication. Maintenance documents must be filed to keep the registration active. Between 5 to 6 years to step 12 or every 10 years to step 13.

Step 12. Registration owner files section 8 declaration: A Declaration of Use or Excusable Nonuse must be filed before the end of the 6-year period after registration, or within a 6-month grace period.

Step 13. Registration owner files section 8 declaration/section 9 renewal: A Combined Declaration must be filed within 1 year before the end of every 10-year period after registration, or within a 6-month grace period.