The trademark registration process is not as quick as it used to be. Over the last few years it has started taking almost a year for an initial review of new applications. Clients rightfully want to know what they should expect in terms of the time to register a trademark. Time and money are big factors in most business decisions, and this is no different. The time it takes to obtain a trademark registration can vary dramatically. But there are several things that you should consider when determining whether to move forward with an application.
Trademark Application Filing Date
While applicants understandably focus on how long trademark registration takes, the date of registration is not the most important date. Instead, the most important date associated with a trademark application is application filing date. Filing a trademark application sets your “place in line” at the U.S. Patent & Trademark Office (USPTO). For example, let’s say that you file your application today. If someone else files an application for the same trademark tomorrow, it will be rejected as long as your application matures into a registration.
In addition, once you obtain your federal trademark registration, your trademark rights from the registration date back to your application filing date. As a result, even if it takes you five years to get your registration, once you have it your rights will date back five years to when you filed your application. So if you are thinking about filing your trademark application, but are worried about how long it will take… don’t be worried. The best thing you can do is file as soon as you are ready. Even if your trademark application faces scrutiny from the Examining Attorney and/or a trademark opposition, the time to register your trademark does not matter, so long as you eventually get your registration. Not filing because you are worried about how long it will take to obtain a registration is really counterproductive.
Time to Register an In Use Trademark
The biggest factor in how long it will take to register your trademark is the filing basis that you use. The most common filing bases are the Section 1(a) “in use” and Section 1(b) “intent to use.” These may sound like legalese, but are essentially what they sound like. The “in use” filing basis is reserved for trademark that are being used in commerce with the products/services in the application at the time the application is filed. The “intent to use” basis, on the other hand, is how you file when there has been no commercial use of the trademark.
In general, applications filed on an in use basis will mature into registrations more quickly. That is because the process does not have as many steps when compared with an intent to use application. After filing, the Trademark Office will review the application to determine if there are any reasons to reject the application. As of the time this blog post is being written, this initial review is taking about 10-11 months. This is typically the longest you would have to wait during the application process.
After the initial review, assuming there are no issues, the trademark is then published for third-party opposition. Publication lasts for 30 days. If no third-party files to oppose (or to extend the time they have to oppose), the registration would typically issue a few months later. As of now, assuming no issues, the time to register for an in use application can be less than 18 months. Things typically take a little longer with an intent to use application.
Registration on an Intent to Use Basis
The intent to use filing basis is very common, since it allows you to file an application before using the trademark. It follows the same process as the in use application described above. The key difference is that it involves an extra step. After publication, instead of issuing a registration the Trademark Office issues a Notice of Allowance. This gives the application six months to demonstrate to the Trademark Office that the trademark is now being used in commerce. The trademark owner must tell the Trademark Office that is the case. They must also provide a specimen that demonstrates how the trademark is used. This is done by filing a Statement of Use.
If the applicant does not have use of the trademark by the six-month deadline, they can file to request an additional six months to the deadline. They can actually file to request five such extensions, adding years onto the application process. In that case, the time to register the trademark largely depends on how long it takes the applicant to start using the trademark. This can add years to the process.
Are You Ready to File Your Trademark Application and Begin the Registration Process?
If you would like to get started on your trademark application, or still have concerns about the amount of time the trademark registration process takes, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
