You might be familiar with the concept of a speedy trial, but what about a speedy trademark? Unfortunately, getting a trademark approved by the United States Patent and Trademark Office (USPTO) is far from a quick process. It can actually take anywhere from a few months to several years. Let’s delve into the details of this process and explore some tips to help it go smoothly.
File your application promptly
As soon as you come up with the perfect name, slogan, logo, or phrase for your product or service, don’t waste any time filing an application with the USPTO. Since trademarks are reviewed on a first-come, first-served basis, the sooner your application is received, reviewed, and approved, the sooner your trademark will be legally protected from use by competitors.
Obtain pending trademark protection
Although the entire trademark registration process can take over a year to complete, you start gaining trademark protection from the moment you file your application. If you eventually receive a federal trademark registration, your rights will be retroactive to the initial filing date.
While the initial steps of conducting a trademark search and filing an application can be completed within a few days and are relatively inexpensive, the subsequent review and final approval process are time-consuming.
After filing your trademark application
After you’ve performed a thorough trademark name search and submitted your application, there are three remaining steps in the process.
1. Review by a USPTO examining attorney
An examining attorney from the USPTO will meticulously review your trademark application. Since the USPTO receives a staggering number of trademark applications each year and has a limited number of examining attorneys, there is an average wait time of four months before the review begins on your application.
You may need to respond to questions from the examining attorney before you can obtain final approval and trademark registration. This additional step often slows down the process.
If the examining attorney decides against registering your trademark, the USPTO will issue an official letter, known as an “office action letter,” explaining the grounds for denial.
For instance, the proposed trademark may be rejected if it bears too much similarity to an existing registered trademark. Alternatively, the application may not sufficiently describe or identify your company’s goods or services. Any issues identified in the letter must be addressed before the review and approval process can proceed.
You have six months to respond to an office action and resolve any issues. Failure to do so within that timeframe will result in your application being considered abandoned, and the process will come to an end.
2. Publication in The Trademark Official Gazette
Once the examining attorney is satisfied that your trademark has overcome any objections, your trademark will be approved for publication in The Trademark Official Gazette, which is a weekly publication by the USPTO.
Within 30 days of the publication date, any party who believes that harm or prejudice will result from the trademark’s approval can file an opposition or request more time to file an opposition.
If an opposition is filed, a proceeding will be initiated to address the objections. However, if no opposition is filed or the opposition is dismissed, the application moves forward to the next step.
3. Issuance of your trademark
In the third and final step, the USPTO will issue either a registration certificate, if your trademark was already being used in commerce at the time of approval, or a notice of allowance (NOA), if your trademark resulted from an intent-to-use filing.
You can expect to receive the registration certificate approximately four months after the trademark’s publication. Obtaining the NOA also takes about four months but involves a few additional requirements.
The NOA indicates that your trademark has successfully navigated the opposition period following publication in the Official Gazette. However, it does not mean that the trademark has been fully and definitively registered.
If you filed your trademark based on intent to use, you still need to file a statement of use to demonstrate that you are actually using it to sell goods and/or services. The statement of use is an official form used by the USPTO and can only be filed once your business has started using the trademark. This rule prevents parties from registering a trademark simply to hold it without any intention of using it in commerce. To prove the trademark’s use in commerce, you can display it on products, packaging, or other marketing materials.
While there are ways to expedite the trademark registration process, it’s best to anticipate a timeframe of about 10-18 months to obtain approval for your trademark.
For more information on trademarks and the registration process, visit the official website of Garrity Traina.
