Starting a business can be scary. There are a lot of unknowns. I absolutely understand that. Starting this law firm was, and at most times is still scary. So, as an attorney that works with business as they grow and build, I want to do all that I can to take out some of those unknowns. Filing a trademark registration can be an extremely lengthy process. One made longer if you decide to try and go it alone the first time around. But, even if you do the smart thing and hire an attorney the USPTO is backed up and moves rather slowly, and as of the update of this article it’s moving even slower. This leaves a lot of people wondering what the heck is going on after they submit their application.Today I thought it would be fun to share a timeline with you, just so you can be prepared for what is to come throughout the trademark application process.
1. First, we need to do a search and analysis
I feel like I talk about this all the time. But the truth is, this is one of the most important parts of the entire trademark application process. You have to do a comprehensive search for any and all registered, almost registered, and common law trademarks currently being used to determine if your application will get approved and make it past the opposition period. If you don’t have a complete picture of what marks are out there, you may face a likelihood of confusion office action, or worse, a time-consuming opposition filed by a priority mark holder. The timeline for this will vary based on who you work with. For me, it is usually a 10-day process from the time I order the report to the time it is reviewed and sent off to the client with my opinion. After my opinion on the “safety” of the desired mark is sent, it is up to the client to decide if they want to move forward with the application. If it’s a yes then…
2. We get the application ready
Again this process will vary based on who you’re working with. For me, there is a short intake form that I have all of my clients fill out electronically. Once I get that back I can get started on the application. Usually, I go back and forth a bit with my client to nail down the proper class of goods and services the client needs, along with obtaining the exact right specimen, but overall I try to get this portion done as efficiently as possible. I will not allow the process to take more than 3 weeks. If you’re slow to answer me for things I need for the application, the USPTO will get to you slowly too. So I do my best to push people along. Overall expect anywhere from 1 to 3 weeks spent on filling in the application and getting it submitted.
3. And now we wait…
When I originally published a post on this topic the standard for the USPTO to assign your application to an examiner was about 3 months from the date of filing. As of 2021, that waiting period before it is assigned to an examining attorney is now almost 6 months, if not longer. There are mechanisms to try and speed this up, but it will cost you. However, if it is important to your brand be sure to discuss those options with your attorney. Once that 6 months is over then the examining attorney will review the file. This might take another 1 or 2 months — it all depends on how busy they are. So really keep this in mind if you’re hoping to obtain a trademark registration prior to launch of your business or product. But, then!
4. The trademark application is reviewed
As I said, the examiner may take 1 or 2 months to review the application. After their review, there are two options. One, they say everything looks good and they send you on to publication (we’ll get there). Or two, you receive what we call an office action. You can read more about those in this article. Office Actions are handed out very regularly and they will vary in severity. They will always slow your timeline down because now the examiner must review your answer to this Office Action and make a decision on your application based on that answer. If the Office Action is substantive then it could take a few months for your attorney to get the answer together before even answering. But, you have 6 months to answer any office action you receive. Expect an additional 1 to 3 months before you hear anything from the examiner regarding your Office Action answer.
5. Everything is approved and we get moved to publication
This is great! If there are no office actions, or the answer to the office action is accepted, then you are moved to publication. This is when the USPTO publishes your mark and gives anyone who may feel your mark is infringing on theirs, or is too close to theirs, the chance to oppose you. They have 30 days to file their opposition. I won’t discuss oppositions here today because that could be an entire series of articles, but hopefully you have done the proper research and this won’t happen to you.
6. You’re officially official!
Congratulations! You made it through the 30 day opposition period and you are officially registered on the principal register with the USPTO. You now have all of the rights and protections you need to conquer the world under your chosen trademark. As you can see, the total timeline can vary greatly depending on what happens. And if you filed a 1b application and not a 1a application, add an additional 6 months after number 6 in which you have to file a statement of use or risk losing your mark. Overall, I have seen the process take between 6 months and almost 2 years. But, there are ways to predict how long it may take at any given point, and if you’re working with an attorney they will keep you apprised of all that is happening. And as a side note, these aren’t all the possibilities — this is just a general best case scenario timeline to fill you in on the process of getting a trademark application submitted and approved.
For more information on this article and this topic, contact Shannon Montgomery.