The timing of trademark registration will vary depending on the type of application filed and issues arising from the trademark examiner’s review or during publication of the trademark.
Types of Trademarks Applicants
Most trademarks are filed as either an “In-Use” (1a) or an “Intent-to-Use” (1b) trademark application. The United States Patent and Trademark Office “USPTO” has published a relatively easy to follow timeline found here:
For an “In-Use” (1a) application, assuming there are no conflicts or major issues, it should take about 6-7 months to receive a final trademark registration. The simple timeline consisting of:
- Application is filed
- Application is reviewed by a trademark examiner 3-4 months after the application is filed
- Application is approved for publication about 2 weeks after examination
- Trademark is published in the Trademark Official Gazette (TMOG) about 4-4.5 months after the application is filed
- Trademark is registered about 11 weeks after publication
This is generally the best case. Small issues, such as a disclaimer requirement or change in a description of the mark, that can be handled by an examiner’s amendment, generally will not delay the trademark registration.
For an “Intent-to-Use” (1b) application, for an application with no major issues, the timeline is modified as follows:
- Application is filed
- Application is reviewed by a trademark examiner 3-4 months after the application is filed
- Application is approved for publication about 2 weeks after examination
- Trademark is published in the Trademark Official Gazette (TMOG) about 4-4.5 months after the application is filed
- USPTO will issue a “Notice of Allowance” about 8 weeks after publication
Once the USPTO has issued a “Notice of Allowance”, the applicant will still need to submit a “Statement of Use” and a Specimen showing the trademark in actual use in commerce to promote the product or service. An additional filing fee is required to file the Statement of Use. The applicant will have 6 months to file the Statement of Use, but the USPTO does allow 5 additional 6 months extensions (an additional fee is required for each extension).
Therefore, the timing of final registration will primarily depend on the timing of the applicant’s use of the trademark.
Issues During TradeMark Examiner Review
For either type of application, after the TM Examiner has reviewed the application they may issue an Office Action, which will discuss the issues that must be resolved prior to the further processing of the application. Potential issues may require, a substitute specimen, a change in the description of the mark, goods, or services, or the need to address a conflict with another prior pending trademark or registered trademark will delay registration. When the USPTO has issued an Office Action, the applicant will have 6 months to reply to the Office Action.
The USPTO’s timeline provides 1-2 months for an examiner review period, but it can often take longer. If the Office Action reply is successful, the application will get back on track to publication and registration. If the Office Action reply does not resolve all of the issues, then the applicant will have another 6 months to try to resolve the issues with the Trademark Examiner or file an appeal to the earlier decision.
Issues During Publication
An opposer to the trademark application can also delay (or prevent) trademark registration. The timing in various situations can be difficult to predict; and will depend on the arguments and strategies available to the applicant. In some cases, the application may even become suspended by the USPTO, pending the registration of another trademark application. Your attorney, however, should be able to give you a reasonable estimate of the different steps in the process.
