How Long Does it Take to Get a Trademark?

By: M. Zane Johnson, Esq.

So, you’re thinking about applying for a trademark and want to know what to expect from the process? Well, you’re in the right place. In this MZA Legal blog entry, I’m going to cover what you should anticipate after filing your trademark application, including:

How long the trademark process takes
What happens after you file your application
When you’ll hear back from the USPTO
What to do if the USPTO examiner initially refuses your trademark registration
What happens when a trademark is approved for publication
And more…

Let’s dive in.

How long does it take to register a trademark?

First things first, the number one question people have about the trademark process is: how long will it take? In true legal fashion, the answer is… ‘it depends.’

Several factors impact the time it takes to register a trademark, including:

The volume of applications being filed with the USPTO
How quickly the USPTO is moving through applications
Whether there is any opposition to your application from the trademark examiner or a 3rd party

Generally speaking, you can expect the entire process to take about 14 months from application to registration, assuming you avoid any hiccups. Even if you encounter minor speed bumps along the way, it shouldn’t take longer than 18 months for your trademark to register. However, if you’re slow to respond to USPTO office actions or need to go before the TTAB to argue for your trademark, the process can take two years or more.

At the end of the day, most delays in the process result from mistakes made by the applicant. For example, failing to conduct a trademark search increases the likelihood that your application will be rejected for a likelihood of confusion. And something as simple as failing to attach an acceptable specimen to your application can cause delays of at least a few months or more.

Take your time and pay attention to the details during the application process to avoid mistakes that could cause unnecessary delays. Here’s what you can expect once your application is filed.

What happens after I submit my trademark application?

Your application will be assigned to a trademark examiner for review. You’ll typically hear back from the examiner about 7 to 9 months after filing your application. This is a pivotal moment in the process. The examiner will either approve your mark for publication or issue an office action refusing to register your mark until the issues they identified are addressed.

If they approve your mark for publication, you’re most likely in the clear (though that’s not always the case). However, if the examiner issues an office action, you may have a problem.

Essentially, a non-final office action is a request for more information. The examiner has found an issue with your application that must be addressed before your claimed mark can be registered.

Trademark examiners issue office actions for a wide variety of reasons.

Some office actions are simple and easy to address. For example, if the trademark examiner wants you to add a disclaimer to your application, you can typically respond by accepting the suggested disclaimer language.

However, other office actions are much more challenging to overcome.

The worst office action to receive is a 2(d) rejection for likelihood of confusion. This response means the examiner thinks your desired mark is confusingly similar to another registered trademark.

While it’s possible to overcome this objection, you will likely need the help of an attorney. If you can’t convince the examiner to change their mind, you’ll have to go before the TTAB to fight for your trademark. Success will come at the cost of significant time, money, and energy, highlighting the importance of running a search prior to filing your application.

Approval for Publication

Once your trademark is approved by the USPTO, it will be published in the USPTO’s Official Gazette. Members of the public will have 30 days from the date of publication to object to the registration of your trademark.

While it’s relatively uncommon for a party to oppose the registration of a trademark at this point, it does happen. Opposition is most likely to come from a business with a similar mark that feels their business will be harmed if your mark is allowed to register.

If someone opposes your mark during this phase, there are two ways to resolve it:

Option 1 – Negotiate a coexistence agreement with the opposing party. Under a coexistence agreement, two parties with similar trademarks agree to place contractual limitations on the use of their trademarks to prevent consumer confusion, allowing both trademarks to be federally registered.

For example, you might agree to limit the geography in which you offer your products or services. Or, you may agree not to branch out into related products or services that the other party already offers.

Although the other trademark owner may demand a fee to enter a coexistence agreement, it may be worth it to avoid the cost of the alternative.

Option 2 – Fight back. If you can’t reach an agreement with the opposing business, your dispute will have to be settled before the TTAB. Proceedings before the TTAB can involve complex legal matters and are subject to intricate processes. At this point, hiring a trademark attorney is likely to give you the best results.

Important Note on Filing Basis

To register your trademark, you must be using it. However, you’re allowed to apply for a trademark before you start using it to secure it for the future launch of your brand.

The information above outlines the process if you’re already using your trademark at the time you file your application. If you’re not yet using your trademark when you file your application, the process will involve additional steps.

If you filed your application based on your intent to use your mark in the future, you must show that you’re actually using your trademark before it’ll be added to the registry. You do this by submitting a statement of use to the USPTO.

You can only submit your statement of use after the USPTO issues a notice of allowance. The USPTO typically issues the notice of allowance a month or two after your mark is published for opposition. Once the notice is issued, you’ll have six months to submit your statement of use.

If you need more time to show that you’re using your trademark in commerce, you can request up to five six-month extensions. This means you have up to 36 months to prove you’re using your trademark as described in your application. However, a $125 fee per class is charged for each requested extension, so factor that into your timing.

Ultimately, applying for trademark protection before you’re actually using the trademark adds a few steps to the process. However, it may be worth it in order to establish ownership over your brand before you invest significant resources into developing it.

Once Your Trademark is Registered

If there is no opposition to your trademark, it will be added to the USPTO’s Principal Register, and a registration certificate will be issued. If you make it to this point, congratulations! You’re officially the owner of a federally registered trademark!

You can view an electronic copy of your registration certificate online anytime using the TSDR by searching your trademark’s registration number. Information for ordering a physical copy of the certificate will also be provided in the email sent by the USPTO.

It’s important to remember that registration is not the end of the brand protection journey but rather the beginning of a new chapter. Once your trademark is registered, it’s critical to monitor for copycats and keep an eye out for similar trademark applications that may diminish the strength of your mark.

Avoiding Unnecessary Delays

Bottom line: once you file your application, it’ll be a while before your trademark officially registers. The one thing you don’t want to do is delay the process any further. Here are a few simple tips to help you avoid extending the time it takes to protect your brand:

Run a trademark search before you apply. A simple trademark search can help you avoid a 2(d) likelihood of confusion rejection, saving you valuable time and money.
Attach an acceptable specimen to your application. The specimen shows how you’re using your trademark in commerce. This may seem simple. However, based on the types of goods or services you offer, your specimen may have to meet very particular requirements. Avoid repeating this step by getting it right the first time.
Describe your goods and services accurately. If the description of the goods and services in your application doesn’t match the description you use in your sales and marketing materials, the examiner may refuse your registration. Describe your goods and services appropriately. Otherwise, you may have to start over.
Hire a professional. Trademark attorneys can draw on their experience filing applications to identify and avoid mistakes that would otherwise lead to delays in the process. You may think you’re saving money by doing it yourself. But in reality, there’s a 50/50 chance you’ll cost yourself more by hiring a professional to fix your mistakes down the line.

If you’re still searching for clarification on the trademark process, feel free to reach out! Give us a call, or schedule a time to discuss how I can help you navigate the process and own your brand, without adding more responsibilities to your plate. I’m here if you need me.