In this blog post we will cover how long it takes to register a trademark, from the initial idea phase through to final trademark registration with the United States Patent and Trademark Office (i.e. USPTO).
The entire process can take anywhere from 12-18 months on the short-end to multiple years if you receive multiple office actions and are not actually using your trademark in commerce when it is otherwise ripe for registration. We highly recommend you consult with a trademark attorney for legal advice before you embark on this process.
TL;DR The trademark application process takes a LONG TIME.
8 Step overview of the Trademark Application Process
Here is a quick overview of the trademark application process. While it may seem straightforward, it is actually quite a complicated process and having a trademark attorney on your side to help you navigate potential issues and identify possible landmines is a smart idea.
- Picking a name
- The trademark search
- Preparing and submitting the trademark application
- Your application is assigned to an examining attorney
- Overcoming possible office actions
- The 30-day opposition period
- Filing an amendment to allege use or statement of use
- Receiving a notice of allowance or trademark registration certificate
Let's review each step of the trademark registration process and an estimated timeline for each.
Step 1. Picking a Name
Picking a “trademarkable” name is arguably the most difficult and time consuming part of the process for many entrepreneurs and businesses. Large businesses will spend huge sums of money to develop brand-worthy names for ad campaigns and future trademark applications.
I recently had the privilege of interviewing Alexandra Watkins for The Legal Jim Podcast. She is the author of a book entitled “Hello, My Name is Awesome: How to Create Brand Names that Stick”. If you are struggling to develop a great brand name, I highly recommend you pick up her book. (affiliate link)
In addition, below is a video I prepared on how to develop a strong and trademark-worthy brand name:
This process can take anywhere from a few days to several months, depending on your project. For that reason, we won't include this step in the overall timeline of how long it takes to register a trademark.
Once you have a name (or several) it is time to conduct a comprehensive trademark search.
Step 2. The trademark search
Conducting a trademark search is arguably the most important step of the trademark process. If your name is not available, then you must go back to step one and start over.
For this reason, many entrepreneurs and businesses develop a list of multiple names and then send that list to their trademark attorney to conduct a quick knockout search and give a thumbs-up or down for each name.
You could do this step of the process on your own, but in my experience, many entrepreneurs don't know how to conduct a proper search and end up picking a name that is likely to be confused with an existing trademark registration, thus wasting a lot of time and money developing a brand that they don't truly own.
A trademark search can be completed in a few hours by a trademark attorney, but it will likely take you much longer to do a comprehensive search if you are attempting to DIY your search (which we do not recommend).
Timeline to complete a trademark search: 1 day
Assuming that you have run a proper clearance search, and your name is available, then you should move on to the next step and prepare your trademark application.
Step 3. Preparing and submitting the trademark application
The trademark application is deceptively simple for a non-lawyer.
What do I mean by this?
I mean that it asks questions that a normal person would assume meant what they were asking.
Questions such as:
- Who is the trademark owner?
- What is your filing basis?
- Are you filing a use-based application or an intent to use application?
- Which class of goods are you including on your application?
- Can you describe what you are selling?
- Can you provide evidence that you are using your trademark in commerce (i.e. evidence of actual use)?
While these questions seem easy to answer at first glance, they all have profound legal significance. If you answer incorrectly, you risk losing a significant amount of time, not to mention your filing fees (currently $250-350 per class of goods that you include on your application).
Not to mention, you must enter all of this information through the USPTO website, which is wordy and confusing to use.
Timeline to prepare a trademark application: 1-2 weeks
Once you have prepared and filed your trademark application, you will receive a serial number for your application. You now have priority over any future trademark applications with the same or a similar trademark selling related goods or services.
Now… you wait.
Step 4. Your application is assigned to an examining attorney
It is currently taking anywhere from 8-10 months from your filing date for an application to get assigned to an examining attorney, also known as the trademark examiner.
The examining attorney will conduct an initial review of your application to identify potential issues, make sure your application meets the minimum legal requirements, and either issue an office action letter advising you of legal problems you must overcome by responding to the office action, or send your application on to the publication stage.
Timeline to be assigned to an examining attorney: 8-10 months
Step 5. Overcoming possible office actions
If you receive an office action letter, you will have 90 days to file an office action response, or you can (for a fee), file a request for an extension of time to respond. This is a relatively new procedure that has been adopted in response to the extensive backlog of applications at the USPTO.
When you file a response, the trademark examiner can either accept your response or they can issue a “Final Office Action” for you to respond to. If you receive a final office action, you can file a request for reconsideration. If that is denied, then you can appeal to the Trademark Trial and Appeal Board (TTAB). If you find yourself in these situations, then I highly recommend you hire a trademark lawyer for help.
Additional time if you receive an office action: 3-6 months
Once you have overcome all legal issues with your application, then the next step for your application is the publication stage.
Step 6. The Publication Stage (i.e. the 30-day opposition period)
This is also what I like to call the “speak now or forever hold your peace” stage of the trademark process. Essentially, your trademark will be published in the Trademark Official Gazette so that any other trademark holder that may have a problem with your application may object to it by filing a trademark opposition proceeding.
If this happens, unless you have deep pockets to pay some hefty legal bills, this can be problematic. But luckily, this only happens in 1-2% of cases.
Timeline for the publication period: Approximately 3-4 months
I realize that it is a 30 day opposition period, but there is at least a month or two on each side of that notice period for “administrative stuff” to happen with your application.
If you didn't file an use-based application from the get-go, and you haven't already filed an amendment to allege use or statement of use, then now is the time to start thinking about these filings.
Step 7. Filing an amendment to allege use or statement of use
This step can actually happen at any point in the process. If you filed an “intent to use” trademark application, then you must file either an “amendment to allege use” or “statement of use” before your trademark will register.
This is because a trademark registration is based on use of your trademark in commerce. If you aren't using your trademark in commerce, then you aren't permitted to have a registered trademark.
If you haven't filed the amendment to allege use or statement of use by the time that your trademark is ripe for registration, then the USPTO will issue a “Notice of Allowance” which means that your registration will issue as soon as you do file a statement of use.
But there are time limits on when this has to happen. You can't sit on a notice of allowance forever and never use your trademark. You have 6 months from the initial notice of allowance to either file a statement of use or file a 6-month extension of time (with a fee).
You can do this song and dance every 6 months for three years before your application will be deemed abandoned and you will have to re-file if you are still seeking a trademark registration.
Timeline to file a Statement of Use: 6 months to 3 years
Step 8. Receiving the Trademark Registration Certificate
Hoorah! Your trademark has been approved and you have received your trademark certificate of registration. Keep this in a safe spot (I recommend framing it) and show it off proudly!
And keep in mind, your date of registration will be used to determine the due dates for any renewal documents you must file.
If you would like help filing your trademark application, feel free to schedule a strategy call with us to learn more about how we can help.