How long does a trademark registration take?
Many variables can prolong the US trademark application process. Generally, the fastest path to a registration would be a mark 1) based on actual use or a foreign registration, 2) that encounters no Office Actions, and 3) does not receive any oppositions or extensions of time to oppose by third parties. Based on the current USPTO backlog, a new trademark application could start examination within 8 to 12 months from the filing date. To get a sense of how long it takes to register a trademark, let’s look into the factors that matter the most.
Need to get a trademark registered with minimal delay and rejections? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can get your mark registered sooner.
How long is the US trademark application review process?
It can take 6 to 12 months from the filing date of a trademark application for examination to begin. If there are no rejections and oppositions, a used-based trademark application may take about 12 to 18 months to register.
An Intent-To-Use application will likely take several more months, or possibly years, depending upon when you begin using the mark on the goods or services identified in your ITU application. From the date of the notice of allowance, an ITU applicant may have a maximum of three years to submit evidence of use.
So it can take almost a year for the commencement of examination. Depending upon their initial review, the trademark application process will likely take several more months if the USPTO trademark examining attorney identifies issues to address.
Some issues are simple and may be resolved with a quick and easy response. We call those non-substantive Office Action response. Others are more complicated, such as a likelihood of confusion rejection or a merely descriptive refusal as discussed below.
What factors affect the timeline of a USPTO trademark application?
Clients typically want to know how long it takes to register a trademark. The length of the trademark application process depends upon three key factors, each of which is controlled by a different party:
- Filing basis (whether use-based or intent-to-use, or foreign registration)
- Rejections / Office Actions (up to the trademark examining attorney)
- Oppositions (up to third parties)
You have control over the filing basis by deciding whether to file based on actual usage of the mark or an Intent-To-Use. If you own a foreign registration for the same mark, you might be able to bypass use requirements by relying on the foreign registration assuming certain requirements are met.
Any rejections or Office Actions will be determined by the USPTO trademark examiner, known as an “examining attorney.” While this factor is outside the control of the applicant, you may be able to reduce the risk of a rejection by taking certain pre-filing precautions. You will also have the option of responding to an Office Action, which might involve arguing against any refusals.
It is up to third parties to decide whether or not to oppose your mark. While you have no control over this factor, you might be able to reduce the risk of an opposition by conducting a knockout search prior to filing.
Factors Within Your Control: Actual Use or Intent-To-Use?
Of the above factors, the filing basis is the one domain within the applicant’s control. The applicant can decide whether to file the application based on actual use or an Intent-To-Use (ITU). Typically, use-based applications mature into registrations more quickly than ITU applications because the applicant has submitted the required evidence of trademark usage upfront.
An ITU application, on the other hand, provides the applicant with additional time to show usage of the mark. Assuming an ITU application is allowed, an ITU applicant may have up to a maximum of three years from the date of the Notice of Allowance to file a Statement of Use with appropriate specimens (e.g., examples) of trademark usage.
If you want the benefits of an ITU application without the delay, you don’t have to wait for the Notice of Allowance to submit your use evidence. Instead, file an Amendment to Allege Use (AAU) as soon as your product or service is sold in connection with applied-for mark. Make sure your application has not yet been approved for publication.
Owners of foreign registrations for the exact same mark can also include a foreign registration filing basis.
Factors Out of Your Control: USPTO rejections
Rejections of trademark applications are issued in letters from examining attorneys called “Office Actions.” There may be a number of reasons why your mark may be refused registration, but two of the most common trademark rejections include:
- Likelihood of Confusion [Section 2(d)] – namely, your trademark is too close to another registered mark.
- Merely descriptive mark [Section 2(e)] – namely, your mark is too descriptive of the goods or services identified in your application.
While you can’t always predict how an assigned examiner may subjectively review your application, you can reduce the risk of a “confusingly similar” Section 2(d) rejection by having a knockout trademark search performed prior to applying for the mark. A knockout search should at least identify prior registrations and pending applications for trademarks that are very close to your proposed mark.
Keep in mind that your trademark need not be identical to a registered mark in order for your application to be rejected on the grounds of likelihood of confusion.
Rejections based on mere descriptiveness can be somewhat anticipated by experienced trademark counsel. When I encounter a client’s prospective trademark that might possibly be rejected as merely descriptive, I err on the side of caution and advise them of the risk. In the end, a well-informed client may still decide to file for a potentially descriptive mark because the pros outweigh the cons.
A trademark Office Action sets forth a non-extendable 6-month deadline for reply. You’ll also want to factor in the additional time an examining attorney may take after an Office Action response is filed to make a determination of the allowability of the mark, which could take several months.
One More Factor Out of Your Control: Third Party Oppositions
Even if the USPTO review process goes smoothly and your mark is promptly published for opposition, you may still encounter opposition by a third party trademark owner who believes your mark should not be registered. Sometimes, a prospective opposer may file an extension of time to oppose your application which could drag the process by a couple more months until they decide whether or not to file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB).
What can delay your trademark application?
The length of the trademark application process may be prolonged due to a number of factors. Instead of a one-year timeframe, the following additional time periods may extend the time for registering a mark:
- non-refusal Office Action (e.g., seeking clarification, disclaimer, revision to identification of goods/services): 6 month deadline to respond to Office Action;
- substantive Office Action: 6-month deadline to respond to Office Action;
- Notice of Allowance in an ITU application: up to a maximum of 3 years for filing a Statement of Use; and
- Trademark Opposition: 2-6 years unless the parties reach an early settlement.
What is the average total pendency of trademark applications?
The average total pendency of trademark applications was over 14 months. Total pendency is the amount of time from the filing date to a notice of abandonment, notice of allowance or registration.
This average length of the total time of a trademark application excludes applications that have been suspended. Keep in mind that a suspension can last for years!
Average First Action Pendency of Trademark Applications
As of June 2022, the average pendency to a first Office Action was over 8 months.
Need to file a trademark application?
Reach out to US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you get started on protecting your trademarks.
