Many individuals, companies, organizations, and brands understand the concept of trademark registration but don’t realize the urgency to register sooner due to the intricacies of the process.
It can take a long time to register a trademark, especially if you’re ill-prepared. And sometimes, the delays can hurt your business or brand name. Here’s what you need to know to get started on the right track.
A registered trademark will protect you against individuals or organizations trying to use the same or confusingly similar mark for commercial purposes. But how can you know that someone hasn’t already registered a trademark for the mark you want?
Every trademark application goes through a rigorous verification process. The United States Patent and Trademark Office (USPTO) will notify you if your submission infringes on other trademarks. That said, getting approved and receiving a certificate takes a long time. And, as you’ll soon learn, every minor issue can lead to a long delay.
Before you even consider filing a trademark application with the USPTO, you should perform a trademark search. You can conduct searches on the USPTO federal trademark database, which contains existing and pending trademarks.
Trademark searches can be time-consuming, but the right legal guidance can hasten the process. At most, you’ll add one or two days to your filing date to gather more information. It’s worth the time investment to minimize the risk of accidentally infringing on an already registered trademark.
After you research the USPTO database for similar marks, you’re ready to start the application process. There are only five main steps required to register a trademark.
Here’s a rough outline of what happens during the trademark registration process:
Submit the application to the USPTO.
Wait for an attorney to review the application.
Respond to any issues that the examining attorney has.
Wait for the trademark to be published in the Trademark Official Gazette.
Provide proof of commercial use with the trademark if you didn’t submit this with your application.
Receive the certificate of registration.
Your trademark filing can be pending for up to 18 months. Typically, you’ll wait at least 12 months before receiving your certificate. However, there are instances when the timeline is even longer.
In general, it takes four to six months for a USPTO attorney to examine your application. If your application passes the review stage, it’s published in the Official Gazette one month later. During this publication period, the public can find your application and determine whether it infringes on any existing marks. The publication stage lasts 30 days to allow for a sufficient opposition period.
Finally, the registration step will take another three months after publication in the Official Gazette. This is the best-case scenario. It could be longer if someone opposes or asks for additional time to contest your submission.
An improperly filed application is one of the first problems that can occur. If you don’t fill out the form accurately and meet specific requirements, your application will raise red flags with the USPTO examining attorney, and your registration will be delayed.
If the USPTO has questions about your application, you’ll receive a letter known as an Office Action. Every applicant must respond to an Office Action within six months. The USPTO will abandon or cancel the registration if you fail to respond.
If you can’t quickly resolve an Office Action, you could add up to six months to the original timeline. But how quickly can this issue be resolved? It generally takes up to two months for an examining attorney to get back to you. So, a one to two-month delay is the minimum.
Of course, delays can happen even if you file everything correctly and pass the examiner’s inspection.
The public gets up to one month to oppose and contest your trademark registration. If someone opposes your submission, resolving the dispute can take several months. Even if you win, you can still wait more than a year to receive your registration certificate.
If concerned parties can’t come to a resolution, the case will end up in a Trademark Trial and Appeal Board (TTAB) hearing process. These are notorious for adding as much as 12 months to the original timeline for completion.
All individuals and brands register trademarks for commercial use. Therefore, your intent must be clear and verifiable to receive a registration certificate.
There are a couple of ways to show intent. The best practice involves showing commercial use for your trademark when you apply for registration.
In most cases, you should include proof of commercial use in the form of a specimen with your application so it exists by the time your submission reaches the publication stage. However, if you don’t file your application with proof, you will likely be looking at a couple more months of delays.
This is somewhat unfortunate because not everyone who wants to register a trademark is ready for commercial use. If that’s your situation, there’s something else you can do.
This type of application indicates that you will use your trademark for commercial use at a later date. Because you give this assurance, your registration process can move forward.
But there are some caveats with the Intent to Use application. Even though it can help you establish an early filing date, it can still add at least two months to your trademark timeline. You also won’t be protected in the eyes of the law until you start using your trademark for commercial purposes.
If you file an Intent to Use, you’ll receive a Notice of Allowance 2 to 3 months after your application is filed, examined, cleared, and sent to the Official Gazette by a trademark examiner. A Notice of Allowance gives you half a year until you need to use your trademark commercially. When you’re ready to use your trademark, you must file a Statement of Use. You can ask for an extension if you still can’t use your trademark. Five extensions are allowed for a total of 36 months.
It may take another two months for the USPTO to review your statement, but once your trademark registers and all goes well, you’ll receive your registration.
The registration process itself isn’t too complicated. But understanding what applications to file and how to resolve disputes can make the difference between getting your certificate in 12 months or three years. However, the process is still far from intuitive for people without trademark law expertise. That’s why it’s best to minimize the risk of delays as much as possible.
One way to do that is to understand how trademark opposition works. Even against a good application, any opposition can add weeks or months to the registration timeline. But it’s harder for anyone to contest an excellent application in the first place.
People and organizations have many reasons to oppose pending trademarks, from preventing consumer confusion to false implications of connection to their brands. Competitors and trademark trolls can still delay your timeline even if you hold all the cards. However, those operating in bad faith have only so much leeway and won’t receive infinite extensions.
With that said, what should you do if someone files an opposition against your pending trademark?
First, you must file a response with the TTAB within 40 days of the date listed on the TTAB’s institution order. You can’t ask for an extension of time on this, and failing to meet the deadline could sway the decision in your opposer’s favor.
Second, you and the opposer will issue discovery requests. This is so everyone can access all the information and evidence required to argue the case. Your opposer will have a 30-day window after your response is filed to make initial disclosures. The discovery period lasts 180 days, and then you, as the applicant, will also have a 30-day window to submit your evidence.
The final part is the rebuttal. The opposer has 15 days to dispute your evidence, and both parties often present trial briefs alternatingly. You can also present additional oral arguments at the TTAB. Even though this isn’t mandatory, it may help.
A TTAB decision on trademark opposition cases takes six months on average. Of course, whatever the decision is, it won’t be final. You or your opposer can appeal to the Federal Circuit or litigate the matter in federal court. However, if your opposer has no legal standing, they won’t be able to harass you for very long, and it will be possible for you to recoup the money spent on attorney fees.
The timeline to completion has nothing to do with when you can start using your trademark commercially. As already mentioned, providing proof of use with your application simply speeds up the registration process.
The USPTO issues your application with a serial number after you file, which signals that you have a pending application. This doesn’t mean it’s available to the general public, but people can still check with the USPTO on the availability of the same mark or a similar one.
This has significant benefits. First, your pending trademark may discourage others from trying to register it themselves. Secondly, you can establish yourself as the first to apply for that trademark. This will give you clout and may provide evidence in a dispute case.
Some marketplaces or industries won’t allow someone to sell without a registered trademark, but many make an exception if you can prove that you have a registered trademark pending. You should have that serial number as proof immediately after filing.
Registering a trademark isn’t free, but it doesn’t have to be expensive. It all comes down to your unique process.
In general, filing fees for a mark in use are around $350 per class. If you want to register a brand and protect your rights over the commercial use of different products, you may have to pay multiple fees for separate classes. If you filed an Intent to Use application, it might cost you an additional $100 per trademark class when you file your Statement of Use.
You might think that using legal assistance, such as a trademark attorney, would increase your spending, but it might lower your costs. Why? You can avoid extra fees because your application won’t contain mistakes, and your trademarks will be appropriately categorized and filed accordingly.
Registering trademarks might be your top priority if you want to make money from your intellectual property. Although it can take up to 18 months, you can successfully register your mark if all goes well and gain trademark protection. If you need it sooner, remember that even a pending trademark can deter people from infringing on your mark, and it’s sufficient for you to start selling in most cases.
If you’re looking for some extra guidance, Trademark Engine can personalize a trademark application that suits your needs and can pass any scrutiny. Don’t hesitate to reach out to learn more about how to shorten the timeline for completion and protect yourself from any opposition.
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.