How long does a trademark registration take?

Many variables can prolong the US trademark application process. Generally speaking, the fastest path to a registration would be a mark 1) based on actual use or a foreign registration, that 2) does not encounter any Office Actions, and 3) does not receive any oppositions or extensions of time to oppose. Such a hassle-free trademark application could mature into a registration 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.

How long is the US trademark application process?

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:

  1. Filing basis (whether use-based or intent-to-use, or foreign registration)
  2. Rejections / Office Actions (up to the trademark examining attorney)
  3. 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.

Within your control: Use or intent-to-use?

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 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.

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:

  1. Likelihood of Confusion [Section 2(d)] – namely, your trademark is too close to another registered mark.
  2. 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.

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.

Average Total Pendency of Trademark Applications

As of June 2022, the average total pendency of trademark applications was approximately 13.5 months.

Average First Action Pendency of Trademark Applications

As of June 2022, the average pendency to a first Office Action is approximately 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.

The following two tabs change content below.

Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com