It’s pretty common for clients to ask me about the US trademark registration process and what they can expect once their trademark application is filed. Although the road to registration can be quite bumpy at times, the good news is that the US trademark registration process is relatively straightforward for most people.
US Trademark Registration Process – Timeline for Initial Review
Once the trademark application is filed with the United States Patent and Trademark Office (USPTO), it will be about a week before the application is available online for public viewing and access. You need to keep in mind that the USPTO will not keep the information you provide on the trademark application form confidential and it will forever be part of the public record.
As a result of the vast number of trademark applications that are filed every year, it will be approximately 3-4 months before the USPTO assigns your application to a trademark examining attorney for review. The trademark examining attorney will first examine your application for completeness and then analyze whether your particular trademark happens to fall into any one of the numerous categories of trademarks that are legally prohibited from being federally registered. The trademark examining attorney will then conduct a thorough search of the USPTO records to see whether there’s a likelihood of confusion between your trademark and another trademark in a pending application or existing registration owned by someone else.
Approved or Rejected?
At this point in the US trademark registration process, two things can happen. If the trademark examining attorney finds nothing that would bar federal registration of your trademark, then your trademark application will be approved for publication. On the other hand, if the trademark examining attorney refuses registration of your trademark, you’ll receive a trademark office action explaining why your trademark application wasn’t approved for publication. In order to prevent your trademark application from going abandoned, you must file a response by the deadline stated in the office action. If you’re able to successfully overcome all of the issues raised in the office action, then the trademark examining attorney will approve your application for publication. If not, your options would be to file a trademark appeal with the Trademark Trial and Appeal Board (TTAB), or simply allow your application to go abandoned.
Published for Opposition
Once your trademark is published for opposition, anybody throughout the entire world can file a trademark opposition against your application if they believe they’ll be harmed by the registration of your trademark. If an opposition is filed within the 30-day publication period, then action on your trademark application will be suspended (put on hold) until the opposition is resolved. This could take weeks, months, or even years.
Certificate of Registration or Notice of Allowance?
If nobody opposes your trademark application during the publication period, and your trademark application was filed under Section 1(a) (use in commerce) or Section 44(e) (U.S. application based on a foreign trademark registration), the USPTO will issue the Certificate of Registration. However, if your trademark application was filed under Section 1(b) (intent to use), the USPTO will instead issue the Notice of Allowance. You then have six months to file the Statement of Use. If you can’t file the Statement of Use within those six months, you can purchase another six months by filing a Request for an Extension of Time. You can purchase up to five Extensions of Time (six months each) before you must file the Statement of Use. Once the Statement of Use is submitted and accepted, the USPTO will issue the Certificate of Registration.
I’m Here to Help with the US Trademark Registration Process
I’m experienced US trademark attorney Morris Turek. If you would like to consult with a trademark attorney about the US trademark registration process, or want to explore the possibility of registering your particular trademark, please call me at (314) 749-4059 for your free consultation. Alternatively, do not hesitate to reach me through my contact form (below) or via email at firstname.lastname@example.org. I look forward to hearing from you soon.
Related Article: How Long Does it Take to Register a Trademark in the US?