One of the most common questions I receive regarding trademark applications is: “How long will this process take?” Unfortunately, there is no definite answer. Numerous variables impact the time it takes to process your application, including your filing basis. A general overview is provided below.
Trademark Filing Basis
Most clients file a Section 1(a) (“in use”) or Section 1(b) (“intent-to-use”) application. A 1(a) application is filed when the mark is already being used in commerce in connection with your goods or services. A 1(b) application is filed when the mark is not yet in use in commerce, but you have a bona fide intention to use the mark in connection with goods or services.
This article focuses on the approximate timeline you can expect for a 1(a) application, assuming you do not receive an office action or opposition. A 1(b) application follows the same overall process. However, it differs because a “statement of use” or “extension request” must be filed within 6 months of receiving a Notice of Allowance. The statement of use is required to demonstrate that the mark is actually being used in commerce in connection with the goods or services. An applicant can file up to 5 extension requests, which would significantly extend the time frame for obtaining registration.
General Timeline for a 1(a) Trademark Application
1. USPTO Examining Attorney Receives and Reviews Your Application
After filing your application, it will be assigned to a USPTO examining attorney in approximately 8-9 months. The examining attorney may take approximately 1 month to review your application. Expect about 10 months to pass before you receive any significant update (either an office action or Notice of Publication).
2. No Office Action —> Proceed to Publication.
If the examining attorney believes your mark is entitled to registration, a Notice of Publication will be issued. The Notice of Publication informs you of the date that your mark will be published in the Trademark Official Gazette (TMOG), which is typically 1 month after the Notice of Publication date. Publication in the TMOG puts the public on notice that the USPTO intends to register your mark. Additionally, it provides a 30-day window for anyone to file an opposition with the Trademark Trial and Appeal Board (TTAB), if he/she believes that registration of your mark would interfere with his/her rights.
3. No Opposition —> Proceed to Registration.
If you are keeping up with the math, we are now at approximately 11-12 months from the initial filling date. Assuming no opposition is filed, your mark will proceed to registration. Another two months may pass before the USPTO officially registers your mark. In total, and assuming that you do not receive an office action or opposition, expect the process to registration to take approximately 13-14 months.
Steps to Avoid an Office Action and/or Opposition
If you receive an office action or opposition, the timeline to registration will be significantly extended. You must file a response to an office action within the designated time, which is typically 3 months. Expect to wait 1 to 2 months for a response from the examining attorney. This process may happen more than once as the examining attorney may issue another office action if he/she determines you have not overcome the reasons for refusal. If you receive a final office action, you also have the right to appeal the decision to the Trademark Trial and Appeal Board. If you overcome the office action(s), the application will then follow steps 2 and 3 above.
Responding to an office action and/or opposition will cost you time and money. There are a couple steps you can take to minimize the chances of receiving an office action and/or opposition.
1. Select a strong trademark.
Common reasons for refusing a mark include that it is: (1) likely to cause confusion with another mark; (2) generic; (3) descriptive of the goods/services; (4) a geographic term; or (5) a surname. The strongest marks are words that are fanciful (made up), arbitrary (do not describe the goods or services), or suggestive (require your imagination to reach the conclusion they related to the goods or services). Click here to learn more about selecting a strong mark.
2. Conduct a comprehensive trademark search.
At a minimum, a free form search should be conducted on the USPTO site for similar marks in the same or coordinated classes of goods and/or services. Additionally, a common law search is highly recommended. In the U.S., common law rights can be asserted by the first user of a mark even without a registration. Therefore, conducting a common law search will help you identify and avoid possible infringement claims for marks that you would not find on the U.S. Trademark Register.