As Tom Petty sang, the waiting is the hardest part. After you put time, effort, and money into filing your trademark application you want to hear something, anything, from the United States Patent & Trademark Office (USPTO). But in reality, not hearing anything bodes better for your registration.
Once they receive your application, along with the filing fee, the USPTO will commence the review process. This comprises two or three steps. The third step becomes necessary if the USPTO finds anything in your application that needs correction or clarification.
The initial review
Even if the USPTO works quickly, they won’t complete your initial review for at least four months. In all likelihood they’ll take a bit longer than that. The initial review process can take up to six months, so it’s best to prepare with that in mind.
During this process the USPTO looks for two main factors:
- Any mistakes on your application
- Conflicts with existing registered trademarks
If they find egregious errors, including the duplication of an existing mark, they could refuse your application outright. That means you have to start over from the start, including payment of a new application fee.
More likely, the USPTO will issue an Office Action. In this case, be prepared for a delayed approval process.
You must respond to any Office Action the USPTO issues. Failure will result in the abandonment of your application. Typically the USPTO will give the applicant six months to respond.
If the Office Action includes just one easily corrected error, you might go ahead and respond yourself. Yet even in this case, you will want to at least consult an attorney. When the USPTO issues an Office Action, they often address multiple, in many cases complex, issues.
Employing an attorney at the start of the process can greatly reduce, though not prevent, your chances of receiving an Office Action at all. But once you do receive one, hiring an attorney becomes an imperative.
For reference, here is a list of trademark Office Actions.
If you prepared an error-free, unique application, you’ll skip the Office Action stage and go directly to publication. This means the USPTO will print your mark in the Official Gazette, which comes out weekly. This effectively serves as public notice that the USPTO is about to approve your mark.
During this publication period, which lasts 30 days, trademark holders can object to your application if they feel it infringes on their marks. Again, if you have properly prepared your application this should not be an issue. If a company does come forward with an objection, you can expect a lengthy delay.
Assuming silence during the publication period, you will receive approval for your trademark. This can take another two to three months, unfortunately, but it does mean you will receive your federal trademark registration.
Once approved, your trademark rights will go into effect, retroactive to your filing date. So if you filed your application in January, 2013, but didn’t receive approval until April, 2014, you will still have trademark rights dating back to January, 2013.
Add up the ranges, and your application can take anywhere from nine to 18 months. In only the most flawless case will the process take nine months — four months for review, three months for publication, and two for issuance. If the review takes six months, plus a six-month Office Action, plus three months in review and another three for issuance, you’ll face an 18-month waiting period.