Applying for and registering a trademark might seem daunting for people who don’t know how the trademark process works. But those who have gone through trademark registration know the real issue with the process isn’t complexity: it’s timeliness.
Registering your trademark usually takes 10 to 12 months, but sometimes you could wait two or more years if complications arise. Of course, nobody wants to wait all that time if they don’t have to. If you want a trademark registration as soon as possible, waiting for years will be both impractical and frustrating.
This article shows you how to shorten that timeframe and put your trademark application process on the fast track to success.
Your journey toward registering your trademark starts with filling out the application and paying the filing fees. This is one of the more straightforward points of the process, as you can get it done entirely online.
Once submitted, your application will go to the United States Patent and Trademark Office (USPTO) for review. The reviewer is a USPTO examining attorney who performs a trademark examination, looking for potential conflicts and checking if you meet all the requirements.
Once the review is complete, the attorney will open your trademark to the public for a month by publishing it in the official gazette. Within that period, any interested party can challenge your application if it turns out your trademark infringes on a previously registered one.
It should go without saying that if a third party opposes your application based on trademark infringement, it can prolong the process. In the worst case, they could find your application not valid, and you’d have to start the process over.
If no issues arise during this period, your registration will be completed soon after you submit a “use in commerce” application. If you submitted an “intent to use” application, you’ll then need to complete the Notice of Allowance process.
A Notice of Allowance signals that your trademark is approved pending the successful submission of a statement of use with a specimen. In these cases, you must submit an approved specimen within six months after receiving the notice.
With all these matters taken care of, the process should be over, and you should receive your certificate of registration via mail.
Bumps in the road for your trademark application can arise at several vital points. In particular, the USPTO examining attorney may find some issues with your application. If that happens, the examining attorney will send you an “office action” letter explaining what issues they identified and providing you with an opportunity to resolve the problem.
When an office action comes up, it will halt the registration process. Even if you react to the action in the shortest time frame possible, the fact that USPTO sent it will prolong your waiting time.
Matters will only worsen if you take your time to resolve the issues stated in the office action. There’s a three-month deadline for a response, but that doesn’t mean you need to wait a quarter of a year before reacting.
If your response isn’t satisfactory, you might receive an additional office action. You’ll again have the option to respond to this office action the same way you did in the first one. Once you receive a “final” office action from an examining attorney, you will have one more chance to address the issues the examining attorney identified.
The office action responses can add months to your registration process. This may even lead to you filing an appeal regarding the USPTO examiner’s findings. However, this could result in formal federal litigation, which could stretch out over the years.
The second contest point is the possible objections you might get when your application is published. If your trademark gets contested this way, the consequences can be severe. At best, you ’ll add several months to the registration process. At worst, your trademark will face rejection. In that case, you’ll need to develop a new trademark and start the registration process all over.
There’s also a caveat to this part of the process. Even if a third party doesn’t decide to oppose your application right away, they can request to extend the time limit. This would effectively lengthen the period in which your application stays public, postponing the final registration steps.
The registration process can get drawn out, especially if you don’t react swiftly during each phase. This is particularly true when filing your Statement of Use. You’ll have six months to submit your statement. Alternatively, you can request a delay in this matter.
If everything that can go wrong does go wrong, you’ll likely spend years getting your trademark registered. Considering that an average registration can take up to 10 months, you’ll want to avoid all possible issues and not spend a day longer than necessary.
You can take specific steps to ensure your trademark registration takes as little time as possible. The trademark itself is the first and possibly most important thing to take care of. Your trademark may present issues in the registration process if it’s not strong enough, doesn’t have a level of distinctiveness, or looks or sounds too much like another mark.
In terms of strength, issues can arise when you use wording that’s too general or descriptive. If the name is too generic, it might be impossible to trademark. An overly broad mark would include a name of a location or a product type. For instance, “California Beef” would be an extremely weak trademark. Overly descriptive names have the same weakness as general ones because there’s no relatability to something an audience already knows and resonates with.
Using a weak trademark can lead to office actions and provide the basis for potential opposition. That’s why one tip to shorten the registration process is to come up with a strong trademark. It should be a creative and distinctive word or phrase that’s unlikely to show up anywhere else concerning your type of commercial activity.
The trademark could suggest a trait your business has, use wording that isn’t commonly associated with your company’s products or services, or consist of entirely made-up words. Simply put, you’ll want to make your trademark as unique as possible and stay far away from general terms and descriptions.
Your trademark must not look or
sound like another already registered mark. This is especially vital if a similar trademark appears in the same industry as yours. Imagine a tech company that produces hardware and software for computers, smartphones, and other gadgets named “Apples.” That trademark is extremely unlikely to be successfully registered.
For this reason, it’s crucial to perform
a trademark search for similar marks before submitting your application. There are resources to help you search the USPTO’s trademark database, but you should be careful when evaluating the results.
It can be challenging to determine whether a different mark is too similar to yours to the point that it might cause issues. After all, many brands use shapes, colors, and words that share specific patterns with other companies. You would be looking for whether someone can mistake one brand for another in the same market.
Using the trademark as early as possible would also help speed up the process. If you’re using the trademark before you start the registration process, you can file a “use in commerce” application and skip the Notice of Allowance process that comes after the publication of your trademark.
Finally, do your due diligence when filling out your application. Although you could complete the application entirely on your own online, you might also choose to use the service of a specialized attorney or agency, who may be able to assist you in obtaining your registration faster.
The trademark registration process isn’t too complicated; it merely requires attention and focus. If you take care of all possible points of contest, your application should be good to go. With every angle covered, you could receive the registration well within a year.
Trademark Engine is here to assist you through every step if you want professional help to guide you through the process. Learn more about our trademark registration service and save yourself time in the long run with your intellectual property.
Trademark Engine is not a law firm and none of the information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation.
Trademark Engine cannot and does not guarantee that an application will be approved by the U.S. Patent and Trademark Office, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome. If you want or have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.