How long will it take my mark to register? (Photo credit: Estee Janssens via Unsplash.com

How Long Will It Take to Register My Trademark?

Nowadays, most entrepreneurs and business owners are already aware of the value of a trademark registration for their brand.  When making that all-important decision to protect their valuable brand with a trademark registration, the most often asked question is, "How long will it take?" The most important thing to know is that the mere filing of an application to register your trademark is not the end of the process, but rather the first step in that process.  While securing trademark registration is a smart move for long-term business success, the process involves several stages that require time, and it is important for business owners to understand the process.

While there are several factors that will influence how long the process takes, this article will endeavor to provide some clarity and understanding of the various parts of that process. 

Overview of the Process

The application process for a US Federal Trademark Registration ideally starts even before you file an application at the USPTO.  Though the USPTO does not require that you conduct any research before you file your application,it is nonetheless prudent to undertake research in several aspects.  Performing such research before filing your application can provide valuable information for use in developing your strategy and preparing your application, as well as maximizing the chances of a successful registration.  This is all the more important,  having in mind that the USPTO will not issue a refund if your application suffers a defect or is unable to proceed to registration.  At a bare minimum, it is valuable and prudent to: a) Research the classes that you want to protect; and b) Research pre-existing trademark registrations for conflicts. 

For more information on conducting a valuable pre-application Clearance Opinion, see our blog article - https://www.iveticlaw.com/what-exactly-is-a-trademark-clearance-opinion-and-do-you-need-one

For more information on researching international classes, see our blog article - https://www.iveticlaw.com/how-do-i-determine-the-classes-for-my-trademark

Here's a condensed look at the steps of the trademark application process thus looks like this

1. Trademark Search — Best before filing an application.
2. Filing the Application — Can be done on your own or with the assistance of a trademark lawyer.
3. USPTO Review (also called Examination) — Approximately 6 to 8 months after filing the application.
4. Publication in the  Official Gazette  — The phase at which 3rd parties have a 30-day window in which to oppose your application.
5. Registration — The issuance of a Certificate of Registration. [Note: if the application was filed on an intent-to-use basis, there is an additional step, namely a Notice of Allowance will issue, and you will have to prove use of the trademark in commerce to attain a registration.]

Current Timeframe of the Process

Currently, as of the time of this article, it is taking (on average) over 12 months for the process, from the time that you file an application, to a final decision on registration.  You can check the official USPTO statistics on current wait times at their website - https://www.uspto.gov/trademarks/application-timeline

Upon the filing of an application for a US federal trademark registration, it will take a period of several months (currently 6-8 months) before the application is assigned to an Examiner Attorney of the USPTO for the Examination Process.  During this time, you are (in essence) waiting in a holding pattern.  Generally, it is not possible to expedite an application (unless there are grounds for a Petition to "make special" - e.g.. pending litigation, a prior registration)

Upon the examination of the application, the Examiner will either approve it for the next phase, or issue a non-final Office Action Regusal.  If an Office Action is issued, that means you have a period of 3 months to address the reason for refusal, and seek for it to be withdrawn.  If you are unable to do so, the application will be abandoned and the process will end (unsuccessfully).  

For more information on how to deal with an Office Action, see our blog article - https://www.iveticlaw.com/understanding-what-is-a-substantive-office-action-refusal-and-how-to-overcome-it

Assuming that the application passes the Examination Phase, the next phase takes approximately 1-2 months.  It consists of a Notice of Publication, alerting you when the application will be published in the USPTO's Official Gazette for the opposition.  When published, 3rd parties will have a window of 30 days during with they can file a legal proceeding to oppose the application from attaining registration (called an "Opposition").  If an opposition is filed, then a separate legal proceeding before the Trademark Trial and Appeal Board (TTAB) must be completed, and the application is paused.  

If no one files an opposition, then the remainder of the process can take a few months or longer.  If you have already established that you are using the trademark in commerce for the stated goods/services in the application, after successfully passing the Publication Phase, a Registration Certificate will issue.  If the application was filed on an intent-to-use basis, then you will get a Notice of Allowance, at which time you will have a 6-month period during which to prove that you have begun to use the trademark in commerce for the stated goods/services.  You can seek to extend for successive 6-month periods.  Failure to commence use and prove that you have commenced use, will result in teh application being abandoned.  

For more information on how to deal with a Notice of Allowance, see our blog article - https://www.iveticlaw.com/got-a-notice-of-allowance-on-your-trademark-application-great-but-now-what

At What Point Can You Use the "TM" or ® Symbols?

You cannot lawfully use the ® symbol for your trademark unless and until a registration certificate is issued to you by the USPTO.  The ® symbol denotes that you have a US Federally registered trademark.  This offers the highest level of trademark protection possible.  You can continue to use that symbol so long as you maintain that federal trademark registration.  

As soon as you file your application at the USPTO, and during the pendency of the application process, you can use the TM symbol.  Likewise, you can use the TM symbol for a state trademark registration, or a common-law trademark that you are claiming (but which is not yet registered).  Use of the TM symbol acts to give notice to the outside world that you are claiming rights in a particular trademark (but have not yet federally registered it).  

Common Causes of Delays

Several factors can delay the trademark registration process, causing it to last longer than the average estimate:

• Errors in the Application: Mistakes or omissions during filing often result in an Office Action.  In addition to the initial 3-month period to respond to an Office Action, you can seek one extension of another 3 months.  Obviously, that time adds on to the process.  
• Conflicting Trademarks: If similar trademarks already exist, the Examiner may issue an Office Action citing a Section 2(d) "Likelihood of Confusion Grounds" (thus invoking the 3-month period previously mentioned).  Further, even if not raised by an Examiner Attorney at the Office Action phase, a conflicting trademark can be the basis of an opposition being filed by a 3rd party at the Publication Phase.
• Opposition Filings: If another party opposes your trademark during the TOG publication phase, it can lead to extended delays.  In essence, a separate legal proceeding before the TTAB must be successfully completed to advance the application further.  Such proceedings can last in excess of a year.
• Incomplete Documentation: Filing the Statement of Use incorrectly can require resubmissions and further review.

How to Make the Process Run Smoothly 

While you can't control every aspect of the process, there are steps you can take to avoid unnecessary delays:

• Conduct a thorough trademark search before filing.
• Work with an experienced trademark attorney to prepare an accurate and complete application.
• Respond quickly to any Office Actions or requests from the USPTO.
• Ensure your Statement of Use is complete and submitted promptly if required.

Protect Your Brand with Confidence

While it takes over a year to obtain a federal trademark registration, the protection it provides for your brand is invaluable. Successfully completing the process ensures your intellectual property is secure and gives you the tools to confidently grow your business.  As indicated above, there are several things that you can do to both maximize the chances for a successful application, as well as to avoid unnecessary delays.  Consulting with an experienced trademark practitioner attorney to lead your application is one of the most prudent and important investments you can make for your brand. 

If you're ready to begin the trademark process but feel overwhelmed, our experienced legal team can help. Our law firm is versed in trademark search opinions, application preparation, and processing applications in USPTO proceedings. Contact us today to schedule your consultation and take the first step toward securing your brand's future.

Contact us for a Free Consultation on your Trademark matter!