Trademark applicants typically want to know how much time 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 (up to you)
- Rejections / Office Actions (up to the trademark examining attorney)
- Oppositions (up to third parties)
Filing Basis Decided by the Applicant
Of the above three 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 trademark usage. 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 evidence of trademark usage. Instead, you can file an Amendment to Allege Use (AAU) as soon as your product or service is appropriately sold in connection with the applied-for trademark so long as 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.
Rejections Issued by the USPTO
Rejections of trademark applications are issued in letters from examining attorneys called “Office Actions.” There may be a number of reasons why your trademark 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 trademark [Section 2(e)] – namely, your trademark 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.
Oppositions Filed by Third Party Trademark Owners
Even if the USPTO review process goes smoothly and your trademark 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).
How Much Time Does it Take to Register a US Trademark?
Generally speaking, the fastest path to a registration would be a mark based on actual use or a foreign registration that does not encounter any Office Actions or oppositions. Such a mark could mature into a registration within 6 to 12 months from the filing date.
From this earliest possible timeframe of 6 to 12 months, tack on the following additional rough time periods for each scenario:
- non-refusal Office Action (e.g., seeking clarification, disclaimer, revision to identification of goods/services): 1-3 months from the filing of an Office Action response;
- substantive Office Action: 2-4 months from the filing of Office Action response;
- 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.
Average Total Pendency of Trademark Applications
As of June 2017, the average total pendency of trademark applications was approximately 9.8 months.
Average First Action Pendency of Trademark Applications
As of June 2017, the average pendency to a first Office Action is approximately 2.7 months.
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