The trademark registration process is not as quick as it used to be. When my practice started, a new application might be reviewed in just a few months. But now it can take almost a full year for an initial review of new applications. Clients rightfully want to know how long it takes to register a trademark. The amount of time between the filing of an application and 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 it takes to get a trademark registration, the date of registration is not the most important date. Instead, the most important date is the application filing date. Filing a trademark application saves 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 you complete the process and obtain your registration.
In addition, once you obtain your federal trademark registration, your trademark rights will 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 to when you first filed the 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 once you have conducted a search and are ready. Even if your trademark application requires you to respond to an office action or defend against a trademark opposition, the time it takes to register your trademark does not matter, so long as you eventually get your registration. Not filing because you are worried about how long the process will take does not make sense for this reason.
How Long 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 Section 1(a) “in use” and Section 1(b) “intent to use.” These may sound like legalese, but mean what they sound like. The “in use” filing basis is reserved for trademarks that are already being used in commerce with the products or 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. Right now, this initial review is taking about 8-10 months. This is typically the longest stretch that 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. This publication period 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. However, 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 applicant six months to demonstrate to the Trademark Office that the trademark is being used in commerce. 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 extend the deadline by six months. They can actually file to request five of these 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.
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.
