If you’ve ever filed for a trademark, you were probably surprised at how long it could take to be approved. Applying for a trademark is not like applying to open a new business – you can’t just go to the website, fill in some blank spots, and bam you’re done! Nope – the trademark office likes to be nice and thorough, for good reason.
The reason for the significant timeline is because the benchmark of a trademark infringement case is “likelihood of confusion.” This means the two marks do not have to be identical in order to constitute infringement. The two marks only have to be similar enough that the junior mark is likely to cause confusion with the senior mark, and it’s up to the trademark examining attorney to make sure that doesn’t happen. This is also why you may hear me preach about running an official paid trademark search even if you’re not ready to file for a trademark. You cannot rely on your own TESS database search.
So here’s the timeline! Remember – the actual time will vary for everyone, but these are approximate times.
1. The Search – If you’re filing for a federal trademark, you absolutely should not enter the application process without running a search. And by search, I don’t mean your own google and TESS database search. I won’t go into details here about why a search is necessary, but you can read my previous blog post about running a search here. Depending on my current turnaround time, my searches take 2-7 business days. Once I give the okay from the search, then we file the application.
2. The Examination – This step takes 3-4 months, and this is when the USPTO’s trademark attorney conducts its exam to determine whether likelihood of confusion exists with another registered mark. There is a number of additional issues the examining attorney looks for – whether corrections need to be made with the application itself or whether the mark is primarily geographic, descriptive, or surname, etc.
If the examining attorney finds no issues with your application, you will be approved for publication (step 4).
If the examining attorney finds an issue, for whatever reason, you will be issued a Non-Final Office Action to which you must respond (step 3).
3. The Office Action – You have 6 months to respond to the office action, but the longer you wait, the longer your application will take. It is best to respond ASAP! If you’re going at the process alone, which I do not suggest, make sure to check out this blog post providing how to respond to your own office action.
When you submit the response, it will take up to a few weeks for the examining attorney to review and determine whether you should now be published (step 4), or whether you will be issued a Final Office Action (repeat step 3).
4. The Publication – Once you’re approved for publication, your mark will be published for opposition for 30 days. This is to give the world notice that your mark will become official unless an owner of a different mark believes your mark will cause damage to its mark. This is rare, but if another mark owner does believe your mark should not be registered, they will file an opposition proceeding. The opposition proceeding is essentially a streamlined trial to determine whether valid grounds do exist and your mark shouldn’t be registered.
If no one files an opposition, or if you prevail in the proceeding, your mark will be officially registered (step 5)!
If a mark owner does file an opposition and prevails, your mark will not be registered.
5. Registration – YAY! You’ve made it to registration. Now it’s up to you to maintain your mark – prevent infringers and maintain registration renewals!
The entire application time will vary, especially if you’re issued an office action. If you want a speedy application, you should respond to your office action ASAP! It also helps to run a search in order to get an idea of what obstacles you will face in the application process. As I mentioned above, I do not advise going into the application process alone. I understand the importance of the application process, and I understand it is a significant investment. Because of this, I offer affordable payment plans! You can get more information about my payment plans by contacting me on my contact page or shooting me an email at andrea@andreasager.com.
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