The federal trademark application and registration process isn’t quick. Take a look at the Trademark Timeline infographic below, and you’ll see that the total time from application filing to registration could vary—anywhere from seven months to two years or more!
The United States Patent and Trademark Office (USPTO) processes all federal trademark applications, and according to the USPTO website:
“It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.”
After you file your trademark application, you’re at the mercy of the USPTO. As you can see in the Trademark Timeline infographic included at the end of this article, it could take up to three months for your application to be reviewed after you submit it. And that’s just the beginning!
Office Action Delays
If the Examining Attorney finds issues with your application that would keep it from being approved, you’ll receive an Office Action, which you need to respond to or your application will be considered abandoned. When you respond to an Office Action, the Examiner has to review your response and could determine that it wasn’t satisfactory. That means you’ll get a second or possibly final Office Action and the process repeats.
You also have the choice to respond to the second Office Action or file a Request for Reconsideration of Final Action, which enables you to enter additional evidence supporting your position in the application record and then appeal the Examiner’s refusal by submitting a Notice of Appeal to the Trademark Trial and Appeal Board. At that point, your file is sent to the Trademark Trial and Appeal Board and formal litigation will begin, which can take months or years. Don’t let anyone fool you—federal litigation is serious business!
Once the Examiner determines there are no problems with your application, it goes to publication in the Official Gazette, the official journal of the USPTO, which gives third parties 30 days to oppose the registration of your mark. For example, another company might claim to have common law rights to the mark that give it priority over your use of the mark.
Any oppositions will delay the process. Furthermore, not only can third parties file a Notice of Opposition, but they can file a Request for Extension of Time to Oppose, which could make the process go beyond 30 days.
Even if no one opposes your mark during the opposition period, it still takes two to three months to receive a Certificate of Registration from the USPTO if your application was for a mark that is already being used in commerce. At this point, you can use the federal trademark registration symbol.
If your mark was filed based on your intention to use it in commerce (meaning you haven’t used the mark in interstate commerce yet), you’ll receive a Notice of Allowance at this point in the process. You’ll have six months to file an acceptable Statement of Use or Request an Extension of Time to File a Statement of Use to receive an additional six months to put your mark in commercial use (you can file up to five extension requests, effectively extending the pendency of your application for 30 months). When the Statement of Use is approved, your mark will finally register.
Once your trademark is federally registered, the process isn’t complete. You still need to follow some trademark renewal and maintenance steps.
Before the sixth year after registration, you need to file a Declaration of Continued Use showing that you’re still using the mark in commerce as it was registered.
Finally, before the tenth year after registration, you need to file another Declaration of Continued Use and an Application for Renewal. If you don’t file these documents on time, your federal trademark registration will be cancelled.
3 Ways to Speed up the Trademark Application and Registration Process
There are a few things you can do to speed up the trademark application and registration process:
- Conduct a comprehensive trademark search before you complete and file your application to uncover as many possible conflicts as possible.
- Make sure you apply to register a strong mark.
- Avoid completing and filing your application yourself or using a cheap legal document service provider. Instead, get help from an intellectual property attorney who specializes in in this area of law and knows the current regulations. He or she can complete and file your application in the best way to ensure your mark gets the protection it needs and your application gets through the registration process with as few delays as possible.