In the United States, trademark applications are processed by the United States Patent and Trademark Office (USPTO). The time it takes for a trademark to register can vary depending on whether or not there are any challenges with the application, but generally speaking a well-done trademark application will register approximately six months from the date it was filed.
The trademark process can be broken out into three phases: 1. the preparation and filing period; 2. the prosecution period; and 3. the post-registration period. Let's take a look at each phase in more detail.
1. The Preparation and Filing Period
During the preparation and filing period, you or your attorney will complete the application for your trademark. The first step is to run what is called a clearance search to ensure that the mark is free to use. During a clearance search it is important to look at both identical and similar marks (including things like translations, alternative spellings, etc.) to analyze whether there would be an likelihood of confusion between the marks. This search should look at those marks registered with the USPTO, but a comprehensive clearance search will also look at state trademarks and potential common law rights holders. The amount of time this part of the process takes depends on the complexity of your mark.
Once the mark is cleared, the application process will be started. This requires you or your attorney to enter in all of the appropriate information into the USPTO application. This includes name and address for the mark owner, the mark for which protection is being sought, the legal basis for protection (either use in commerce or intent to use), the goods and services for which the mark will serve as a source identifier, the date the mark was first used, the date the mark was first used in commerce, and an appropriate specimen if you are filing on a use in commerce basis. Once all of this information has been entered, you will electronically sign and submit the application and pay the appropriate filing fee.
2. The Prosecution Period
The prosecution period begins once the application has been filed. From the date of filing, it will take approximately three months for you application to be assigned to an examining attorney. Once the mark is assigned to an examining attorney, that attorney will evaluate whether the proposed mark complies with the USPTO standards and assess whether there are any impediments to registration. If the examining attorney finds an issue with the application, an office action will be sent to the applicant or their counsel. The applicant has six months to respond to the office action. If there are no issue with the application, the application will be assigned a publication date, typically two to four weeks later.
On the publication date, the application will be published in the Trademark Gazette, which puts the world on notice that the applicant has applied for the mark. Publication also starts the thirty day opposition period. During these thirty days, anyone that would be harmed by the application's approval may file an opposition proceeding to attempt to stop the mark from registering. If opposition proceedings are initiated, the case will be brought before the Trademark Trial and Appeal Board (TTAB) for a decision. If the opposition period concludes and no oppositions were filed, the mark will register and the registration certificate will be issued approximately six weeks later. Exciting!
3. The Post-Registration Period
It's important to recognize that your trademark obligations don't stop when your mark registers. Once you have registered your trademark, you have a duty to police the use of your mark to ensure that others are not diluting your mark's strength. If you fail to properly police your mark and address infringers, you run the risk of losing the rights to your mark.
Did you find this information helpful? You can download a high-resolution printable pdf of this infographic for quick reference using the download button below. Keep it on hand to track where trademark applications are in the USPTO process and estimate when they will register.
Empowered IP Course
If you'd like to learn more about how copyrights and trademarks can be used to protect your work and your business, consider taking our Empowered IP e-course. This 6 week online course for creators and business owners is structure to give you the fundamental knowledge you need to perform comprehensive searches, properly complete and prosecute applications, and defend your work against potential infringers. You can purchase the course to the left or read about all the details on the Empowered IP page.