What is the process of getting a trademark? A step-by-step timeline.

Trademark Registration Process

A step-by-step guide to the trademark Registration process and timelines

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.

Why such a long wait?

Much of the waiting period falls between application submission and the USPTO examination. Trademarks are in high demand with roughly 63% more filings over last year, or approximately 211,000 more applications overall. Currently, new applicants should expect to wait at least 8-9 months for examination.

However, the process is worth the wait. Securing the intellectual property rights for your brand or business is an essential step in any business journey. Trademark rights, in particular, can be a powerful asset. The EPO reports that companies with ownership of registered trademarks enjoy an average of 21% higher revenue than businesses without trademark ownership.

What happens once i file a trademark application?

Trademark registration does not issue until the USPTO approves the application. However, limited rights are applicable upon the submission of your trademark application. For starters, filing an official trademark application confers a priority date, preventing after-arriving applicants from obtaining registration in a confusingly similar mark to yours (provided they have not used the mark before your application or first use date and do not take action to ratify claimed earlier use rights). Additionally, your application number alone will convey an official status useful in enforcing against infringers. Your attorney will be the best source of information and guidance regarding your trademark rights.

Pre-application

Timeline: 1 Day to 1 Week

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.

2. Engagement

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.

Application Drafting

Timeline: 1 to 2 Weeks

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.

USPTO Review

Timeline: 8 to 9 months

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.

PUBLICATION

Timeline: 30 DAY PERIOD FROM PUBLICATION DATE

7. 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.

9. Registration

Once the statement of use is approved, the USPTO will issue a Registration Certificate.

9. Maintenance

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.

Zach Eyster, Senior IP Counsel

Zach Eyster
Of Counsel Attorney, Trademarks
[email protected]

Zach’s experience in trademark, brand, licensing, and technology runs deep, as he has operated within these very specialized, niche areas of practice over the course of his entire legal career.
Having accrued significant experience before the USPTO and Trademark Trial & Appeal Board, and in the day-to-day protection and growth of clients’ IP assets, he is well-prepared to counsel on the most efficient, cost-effective, and investment-worthy courses of action with clients at all stages of growth and maturity.
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