The trademark application process takes time and if nothing goes wrong can still take nearly a year until the trademark is registered at the USPTO
For a trademark application that is filed based on use and receives no Office Actions or Oppositions, the application can become a registration in as short of a time as seven months. Seven months would be the absolute fastest a trademark owner can apply for and receive a trademark registration with the United States Patent and Trademark Office (USPTO). Each Office Action, or even worse, opposition, can significantly slow down the process. Below is a step-by-step process and how long each stage of the process takes.
1. Trademark Application is Filed: Once the trademark application is filed with the United States Patent and Trademark Office (USPTO), the USPTO assigns the application a serial number. Each trademark application is assigned an unique eight digit serial number. The owner of the trademark application can follow the status of their application at the USPTO Trademark Status & Document Retrieval (TSDR) by entering their application serial number into the system.
Screenshot of the Trademark Status and Document Retrieval System
2. Trademark Examining Attorney Reviews Application: Approximately three months after filing a trademark application, the USPTO will assign the trademark application to an Examining Attorney. The Examining Attorney reviews the application to determine whether it meets the federal requirements to receive a federal trademark registration. The initial review process, according to the USPTO, takes approximately one month.
3a. The USPTO Approves the Mark for Publication: If the trademark application meets the federal statutory requirements for trademark registration, the Examining Attorney will approve the application for publication in the Official Gazette. The Official Gazette is published weekly online to give notice to the public about what trademarks it plans to register in the future. Approximately one month after the trademark is approved for publication, it will appear in the Official Gazette for a thirty day opposition period.
3b. The Examining Attorney Issues an Office Action: Office Actions are one of the main reasons a trademark application can be held up and delay registration for months, and even years. An Examining Attorney issues an Office Action when the application does not meet the statutory requirements to receive registration status. For example, Office Actions can be issued for an improper specimen, a likelihood of confusion issue, or something as simple as part of the application was not filled out properly.
An example of an Office Action taken from the Trademark Status and Document Retrieval System
Once an Office Action is issued, the owner of the trademark application has six months to respond to the Office Action or the application will be considered abandoned by the USPTO. Once the trademark owner responds to the Office Action, the Examining Attorney will determine whether the response fixes or clarifies the trademark application to meet the trademark requirements in approximately one to two months. If the Examining Attorney’s concerns were not satisfied in the Response to the Office Action, then the Examining Attorney will likely issue a Final Office Action. The Trademark Owner again has six months to respond to the Examining Attorney’s concerns directly or can appeal straight to the Trademark Trial and Appeal Board to explain why he or she believes the Examining Attorney is wrong. Failure to respond will result in the abandonment of the trademark application.
It is clear that Office Actions lead to a much slower application process and can prevent an application from proceeding to a trademark registration in a timely fashion. The best way to avoid Office Actions is to diligently and carefully prepare the trademark application before filing. Only after all Office Actions have been overcome, will the Examining Attorney then approve the trademark application for publication.
4. The Trademark Is Published in the Official Gazette: Once the trademark application is published in the Official Gazette, the application is subject to a thirty day Opposition Period. During the thirty day opposition period, any person or entity who believes registration of the trademark will harm them may file an objection to the trademark application with the Trademark Trial and Appeal Board (TTAB). If an objection is filed, the trademark application is paused until the opposition is resolved by the TTAB. If no opposition is filed, the trademark the trademark will register in approximately three months.
The above screenshot is of the Official Gazette taken from the USPTO website here
Generally, people, companies or other entities will oppose a trademark application if they believe it will likely cause confusion among consumers based on trademark rights owned by the entity opposing the application. Since the application is completely suspended by an Opposition proceeding at the TTAB, it is best to avoid someone filing an opposition by performing due diligence before filing a trademark application that there will be no Opposition filed because there are no confusingly similar marks already registered or being used in the marketplace.
5a. Use Based Applications - Trademark is Registered: If no opposition is filed, the trademark application will be registered by the USPTO approximately three months after the end of the thirty day opposition period. At that time, the USPTO will send an official registration certificate to the trademark owner and assign the trademark an USPTO trademark registration number.
5b. Intent to Use Applications - Notice of Allowance is Issued: For Intent to Use applications, if no opposition is filed, the USPTO will issue a Notice of Allowance. The Notice of Allowance is essentially pre-approval for the trademark application conditioned on the owner submitting a Statement of Use, which must include a trademark specimen. Once the Notice of Allowance is issued, the owner of the application has six months to file a Statement of Use or request a six month extension to file a Statement of Use. The owner of the application can only file extensions to file the Statement of Use for three years. After three years, or if no Statement of Use or extension is filed in any six month window, the application will be treated abandoned by the USPTO. Once the Statement of Use is submitted, the Examining Attorney will spend approximately one month to review the Statement of Use and approve or deny it. If approved, the application will proceed to registration in approximately two months from the time it is approved.
Hard copies of trademark registration certificates are mailed and .PDF copies are put into the Trademark Document Retrieval System (TSDR) online. Here is an example registration from the TSDR.
For more information of the Trademark Application Timeline, review the USPTO’s timeline pages here.
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