There is a specific trademark timeline that all trademark applications follow after the application is filed.
If everything goes smoothly, your trademark could register in as quickly as about 9 months. This can vary by a few months depending on certain aspects of your application including things like whether you filed on an actual use or intent to use basis and whether you receive an office action.
Trademark Search Timeline
Before even filing a trademark application, it is advisable to do a trademark search. Doing this due diligence prior to submitting a trademark application to the U.S. Patent and Trademark Office (USPTO) can ultimately save time in the application process.
The timeline for performing a trademark search is short since it only takes us a day or two. Ideally, you’ll want to do a trademark search before ever using your trademark in commerce. This will reduce the chance that you commit trademark infringement and thus waste time on a trademark that you can’t own. This can save you untold amounts on marketing, rebranding and legal issues.
Trademark Process Timeline
Once you submit your application, eventual registration is largely out of your hands. The USPTO examining attorney will decide whether your trademark meets necessary requirements and if a likelihood of confusion exists with any prior filed trademark applications. For some, this will be the sole hurdle in registration.
Unfortunately, other issues may arise that extend your trademark timeline. The average pendency of these applications is typically 9 to 11 months, but several months are can be added if there are delays in submitting a statement of use, in responding to an office action, or if a notice of opposition is filed with the Trademark Trial and Appeal Board (TTAB). The following timeline focuses on a scenario when these additional proceedings aren’t necessary. A typical trademark timeline is:
- Examiner approves the application – timeline: about 4 months: It can take between three and four months for a USPTO examining trademark attorney to review and approve your submission. They’ll ensure that it meets all necessary requirements and will not create a likelihood of confusion among consumers.
- Publication – timeline: about 2 months: If the examining attorney discovers no issues with the application, it will be published in the Official Gazette for an opposition period. This will allow the public to review your trademark and contest it if they feel there is a reason to do so. This process takes about 2-3 months.
- Registration – timeline: about 3 months: If no one opposes your registration or requests an extension of time to oppose, your trademark will typically register within three months of its publication in the Official Gazette.
If an office action issues, or if a third party opposes your trademark application, you can expect the following delays:
- Office Action delay: If the examiner does discover problems with your trademark application, they’ll issue an Office Action. This is an official letter that details the problems in your application. This is where timelines can diverge dramatically.
- i) You have six months to respond to the Office Action. If you fail to do so, trademark abandonment will occur.
- ii) If you submit a response in a timely manner, it can take between one to two months before receiving a response from the examining attorney. If you’ve rectified all issues, your identifier moves forward to publication in the Official Gazette.
- iii) If you fail to correct issues raised by the examiner, you will receive a Final Office Action. Failing to respond within six months will result in an abandoned application. Typically it is difficult to overcome a 2nd office action.
- Opposition delay: If an opposition is filed, this will add at least a few months but likely several months to your trademark timeline. The length of the delay will depend on whether the parties are able to settle the dispute or if instead it becomes a contested matter. If your application is opposed, you could end up going through the entire TTAB hearing process which can take a year.
Intent to Use Trademark Timeline
A trademark timeline will also be delayed if at the time of filing you have not yet used your trademark in commerce. If use has not yet begun at the time of filing, the application must be filed on an Intent to Use basis.
There are a variety of benefits linked to submitting an application based on a bona fide intent to use, but the most important may be the establishment of an earlier filing date. This will allow you to go through nearly all of the necessary steps for registration prior to commercial use. Until this usage has occurred, though, you will not be able to obtain full protection.
While the trademark timelines for applications based on actual use and intent to use share some similarities, there are several noticeable differences:
- From time of filing: The timeline of Intent to Use applications remains consistent with submissions based on actual use from initial receipt to the opposition period. An examiner will review your application and potentially send an Office Action. If there are no issues, your brand identifier will be published in the Official Gazette for the 30-day opposition period.
- Notice of Allowance: If you encounter no issues with the examining attorney and no one files an opposition against your application, intent to use applications will receive a Notice of Allowance in as little as six or seven months after filing. This begins a six-month timeline in which you’ll need to use your identifier in commerce.
- Submission of SOU: Your Statement of Use is a declaration that you’ve used your trademark commercially. If you cannot submit this within six months of receiving your Notice of Allowance, you’ll need to request an extension. You can file up to five extensions, and each will grant an additional six months for commercial use.
- Statement of Use Review: An examining attorney will typically review your statement of use within a month or two of your submission. You will then be sent either an Office Action or your application will be approved for registration.
Overall an intent to use application can add as little as a month or two to the trademark timeline, or as long as 3 years, depending on how quickly you file your statement of use.
The most time-consuming delay that a trademark applicant may encounter is an opposition. Fortunately, not everyone can file a Notice of Opposition against your application. If someone feels your registration would harm them in some way, though, they may have standing to do so. Even in cases where your trademark prevails, such a scenario can add several months to the process.
There are many reasons someone may have standing to oppose your registration:
- An alleged likelihood of consumer confusion.
- Claims that an applied-for identifier is merely descriptive or generic.
- A claim that the trademark is primarily merely a surname.
- A false implication of origin, connection or sponsorship would be created.
- The potential for trademark dilution would exist.
Even though an opposition can extend your trademark timeline, you should never simply give up if you’re within your rights. Competitors and even trademark trolls may attempt to hinder your registration in bad faith. If you do end up before the TTAB, though, you can anticipate the following timeline:
- Third party filing: Parties with standing must file their opposition within the 30-day publication period or request an extension to do so.
- Respondent’s answer: Applicants will have 40 days to file a response with the Trademark Trial and Appeal Board. If they fail to meet this deadline, a default judgment may be given to the opposer.
- Discovery: Both sides may issues discovery requests. This involves requesting information from the other party along with gathering expert testimony, witness depositions and additional evidence.
- Testimony Period: Both sides have the opportunity to present testimony evidence. This occurs in an alternating fashion.
- Opposer has 30 days to present evidence.
- Applicant subsequently has a 30-day period to submit evidence.
- Rebuttal period of 15 days granted to opposer after applicant’s submission.
- Trial briefs: Parties present their trial briefs in a similar alternating fashion.
- Oral arguments: While not required by the TTAB, both parties have the option to present oral arguments.
- TTAB decision: After both sides have completed evidence submission, trial briefs and oral arguments, the TTAB takes an average of six months to make a decision.
- Appeal process: The unsuccessful party can appeal through the U.S. Court of Appeals on the Federal Circuit. They could also file trademark litigation in federal court.
The timeline associated with oppositions can vary greatly since opposers are free to withdraw their opposition at any point, and both parties may decide to settle the issue among themselves. Typically in these cases one side or the other simply gives up rather than continuing to spend time and money on the matter.
After registration trademark must be renewed to remain in force. Your brand identifier can theoretically enjoy perpetual protection, but this is only the case if you continue commercial use and file the appropriate maintenance documents in a timely manner.
The following timeline must be followed to avoid trademark abandonment:
- Declaration: Five to six years after registration, you must file a Section 8 Renewal attesting to continued use. The following must be included.
- Declaration of continued use.
- Evidentiary specimens showing continued use.
- The requisite government filing fees
- Explaining non-use: If you aren’t currently using your trademark in commerce, you can explain non-use. The following instances are a few of the acceptable excuses:
- Trade embargo has occurred.
- Necessary retooling resulted in production stoppage.
- Fires, serious illness or other potential catastrophes.
- Renewal: Between nine and ten years following registration, you must file a Section 9 Renewal in addition to a Section 8 declaration.
- 10-year renewals: A Section 8 a Section 9 renewal must be filed every 10 years from this point forward. Continued use must be shown with each submission.
- Office action: If you receive an Office Action related to your declaration or renewal, you have six months to respond. If you submit these forms early, you’ll have until the end of the relevant filing period.
If you have any questions regarding a trademark timeline, please contact us today.