A step-by-step guide to the trademark Registration process and timelines
- Trademark Timeline Overview
- Application Drafting
- USPTO Review
- Statement of Use for Intent-to-Use Application
trademark TIMELINE OVERVIEW
As of December 2021, the currently estimated pendency of the USPTO trademark registration process is about 11.2 months. However, it appears that the USPTO’s response times are taking longer and longer all the time, so you should be prepared for a year, or more, of time between application and registration.
1. Attorney consultation
At Founders Legal, we begin the process with a free initial consultation to discuss your trademark needs and determine the best course of action for securing your intellectual property rights. During the consultation, the attorney will gather preliminary information regarding your request to determine the forms of trademark protections that will be most effective for your business or brand. The attorney will provide a quote for services and a discussion summary following your consultation.
Haven’t scheduled a consultation yet? Click here to schedule a free 15-minute, phone consultation with one of our trademark attorneys.
If you wish to proceed with our services, you will need to engage Founders Legal to represent you in a given trademark matter or matters. A trusted member of our team will reach out to you to begin the engagement process. At this time, our team will send over the engagement letter for your approval, as well as details on how to submit your retainer payment.
3. Trademark Intake Form
Once the engagement letter has been signed by all parties and the retainer has been paid in full, our trademark team will reach out to gather any additional trademark, owner, or design information required for the formal application filing.
4. Trademark Search
Your attorney will conduct a preliminary availability search in the USPTO database to determine if any senior applicants or registrants may already exist on the register. This is an essential step of the process. It identifies any potential marks that might prevent the registration of your mark or make the application process more costly and time-consuming.
5. Trademark Application Preparation
Next, the attorney will prepare an official USPTO trademark application. Once the application is complete, the attorney will apply on your behalf.
6. Formal Examination
Once your application has been submitted, it can take anywhere from 8 to 9 months for a USPTO examining attorney to begin reviewing your application. The examining attorney will ensure that your trademark meets the filing basis requirements and search the database for any conflicts. Once reviewed, the attorney will determine if any substantive issues exist with your trademark.
a. If the examining attorney finds a substantive conflict with your mark, they will issue an office action or an official letter explaining their reason behind refusing the trademark. At this time, we will have up to 6 months to respond to the examiner. Once we receive the initial office action, your attorney will reach out to discuss the options to resolve the office action. Occasionally a Response to Office Action may fail to overcome the examiner’s objections, resulting in a Final Office Action. These rejections can be appealed through the Trademark Trial and Appeal Board (TTAB), though success is not assured, and the appeal process is costly. We work very hard to apprise clients of rejection risks to avoid this outcome, though we cannot ever perfectly predict the USPTO’s approach to a given mark.
b. If the examining attorney finds no substantive conflicts with your mark, your mark will be approved for publication.
At this stage, the USPTO will formally publish your mark in the Official Gazette, a weekly online publication. During this publication period beginning on the date the mark is officially published in the Gazette and continuing for 30 days, a third party has the right to object to the filing through an opposition.
a. If an opposition is filed by a third-party, your mark will be subject to Trademark Trial and Appeal Board (TTAB) for an official administrative proceeding resembling a court action, which can delay the timeline of your trademark process.
b. If no opposition is filed, the USPTO will issue a formal Notice of Allowance, if your mark was filed before using it in commerce, or a Registration Certificate, in the event the mark was filed on a use basis.
Statement of Use for Intent-to-Use Applications
8. Notice of allowance
After the publication period, if the application was filed on an intent-to-use basis, your mark will be issued a Notice of Allowance. Once you commence using the mark, subsequent statements of use will be necessary to file to obtain your official registration.
Once the statement of use is approved, the USPTO will issue a Registration Certificate.
To keep your trademark registration and trademark rights active, you will need to continue using your trademark. Additionally, you will need to maintain your trademark through the USPTO regularly (initially, between the 5th and 6th anniversary of your registration dates). For maintenance options for your registered trademark, consult your attorney.