The Trademark Registration Process and Timeline
Lawyer Consultation to Filing
Once you decide to work with us after consultation with a lawyer, we run a conflict search of a mark you submitted. After the mark is cleared, we proceed with filings.
Initial Filing To The First Review
The federal trademark application and registration process are a long and tedious one, sometimes taking anywhere from several months to several years. After filing for your trademark, the United States Patent and Trademark Office, or USPTO, could take about three months just to simply review your application. From there, your application could be approved and the USPTO publishes the trademark, or the Examiner could find some errors in your application and sends out Office Action.
The USPTO issues Office Action if there are any issues with the application that prevents it from being approved. An office action is an opinion letter from the USPTO stating they have a reason (or reasons!) to reject your application. A lot of people use document preparation companies like Legalzoom to save the cost but end up getting a lawyer's help due to office actions. If you receive an Office Action, you will have six months to respond and correct your errors. Failure to respond in six months will result in your application being considered “abandoned,” and you will need to start the process again with a new application. After reviewing your response, the Examiner reviews whether your response is satisfactory. If not, a second or final Office Action will be sent out about one to two months and the process in the first office action repeats. If you have received a final Office Action, you will have 6 months to request a reconsideration of the final action or file a Notice of Appeal with the Trademark Trial and Appeal Board. Because of this, it is crucial that your application is filled out correctly because this process could delay your application by roughly a year.
The Opposition Period
Once one to two months have passed after all Office Actions have been resolved, your application enters a stage called “The Opposition Period”. At this time, your application will be published in the official journal of the USPTO (the Official Gazette). Your application will be able to be viewed by the public, and it gives 30 days for anyone to oppose your mark. Opposing third-parties can also request to have the opposition period extended, delaying your trademark even longer. (e.g. DC Comics opposed to Rihanna's first name 'Robyn' arguing it is confusingly similar to their Batman sidekick Robin)
Certificate of Registration and Renewal
If there is no opposition to your trademark, your mark will be federally registered with the USPTO within about two to three months and you will receive your Certificate of Registration, but the process doesn’t end there. Between years five and six after registration, a Declaration of Continued Use must be filed in order to prove that you are still using your mark in commerce. Failure to file at this time could result in the cancellation of your federal trademark registration. Between years nine and ten after registration, another Declaration of Continued Use must be filled out, along with an Application for Renewal.
In conclusion, it takes 8 months to several years to register a trademark. Make sure you apply to register a distinctive mark, one that is unique, easily recognizable, and has no dictionary meaning or significance except as a trademark. Also, seek help when filling out your application from an intellectual property attorney. Filing with an attorney increases the chance of trademark registrations. Experienced trademark attorneys can file your application in the best way possible in order to get your mark the protection and strength it needs to get through the registration process with as few delays as possible.
Intern, Claudia Anna Suszczynska