The following is a transcript of one of the post popular videos on our YouTube channel.
Let’s review the entire process of getting from filing a trademark application with the USPTO to receiving a registration. There are a lot of steps, it takes time, but we just want to walk you through that because we’ve talked about, in previous videos, the different choices you have to make and what to put into your application but it occurred to us we haven’t walked you through what happens after you file.
One of the most frequent questions we get is really how long will this take? The real answer is “it depends.” What we’re going to show you today is why it depends, because there are so many hurdles and you’re dealing with a federal government agency that handles thousands upon thousands of applications a year. An application can take anywhere from seven months to many years, if there are hiccups along the way.
Once the application gets submitted to the USPTO, what happens next? Immediately the Patent and Trademark Office issues you a receipt, a Serial Number for your application so you can track it, and it goes into the USPTO’s database. At that point, it’s in the hands of the Patent and Trademark Office …. and it’s going to sit there for a couple of months, actually.
Actually, it goes into the database, of course, with your serial number but it won’t actually show up in the public version of the database for a few days. Sometimes people have concerns after they’ve filed it. They type in their serial number in the search engine, at the PTO, and they don’t see their application yet. It takes a few days to be uploaded through all of the steps to show up.
Now, after it’s been filed and you’ve received the receipt and the serial number, that next step is the USPTO review. It takes about three to four months before an examiner at the US Patent and Trademark Office, there’s about 300 examiners, will open the file and review what’s in it. Once they do so, they’re looking at both procedural issues and substantive issues, and once they do so if there are any deficiencies or corrections or substantive reasons to refuse it the Examiner will issue an “Office Action.”
An Office Action could be about anything. It could be a small little procedural thing, something you got slightly wrong and can be corrected with a phone call to the examining attorney. Examining attorneys might even just call you and say, “I’ll let it go if we just fix this one problem,” or it could be something a lot more involved that could be is the mark likely to be confused with another trademark already on the register or is it descriptive? It might be something that requires a lengthy legal response with a lot of evidence and legal arguments.
Sometimes an application will be perfect and will move beyond this phase immediately. That is definitely the exception, not the rule. The great majority of applications either require an Office Action or an amendment from the examining attorney at the trademark office after a discussion with the applicant or the applicant’s attorney.
Let’s presume that an Office Action has been written and issued by the examining attorney. The next step, that Office Action is emailed to the attorney or to the applicant and then the applicant gets six months to respond. Now, they could respond immediately if it’s something simple, or they could take the entire six months and respond. The important thing is that that deadline gets set and that it doesn’t get missed, otherwise the application could be in jeopardy.
If you do miss one of those deadlines, there are some very narrow circumstances in which you can get your application revived but, in most cases, it’s going to be abandoned so it’s pretty important that you’re keeping track of those deadlines.
If the applicant responds to the office action and it resolves all of the issues, it either corrects the procedural issues or overcomes or withdraws the other reasons for refusal, the Examining Attorney at the USPTO will go ahead and give it what’s called an approval for publication, we’ll get to that in a minute. If it doesn’t correct all of those issues, if there are still outstanding issues, either a new Office Action will be issued if there are new issues or once all of the issues have already been addressed once, then the examining attorney can issue what’s called a Final Office Action.
You, again, get six months to respond to the Final Office Action. Basically, you get a second chance to convince the Examining Attorney that your application deserves to be registered, the USPTO is always going to give you a second chance. The response to a Final Office Action is not an office action response, it’s a Request for Reconsideration which is similar but not exactly the same.
Or, at that point, another option may be an Appeal to a panel of judges called the Trademark Trial and Appeal Board (or TTAB). We’re not going to deal with that at all today but you can see how long and complicated this process can be just filing, issuing an office action, responding to an office action, issuing a final office action. If all of those deadlines are pushed to close to the maximum, that could be a year and a half or more.
And we haven’t talked about the big cause of delay yet, the suspensions. Suppose that the examining attorney thinks that your application is likely to be confused with an application that was filed before yours but hasn’t registered yet, you might have your application suspended until that one gets resolved. Then, that one might be suspended because the one before that, which was suspended because of one before that. We won’t get into it but sometimes the occasional application can be sitting there for a long, long time.
Suspensions are not uncommon but they’re also not the majority of cases. If there is a pending application that’s a possible conflict, the examining attorney cannot rule on it until that pending application is resolved as either a registration or an abandonment because that pending application may never become registered, in which case that issue gets taken off the table automatically without having to deal with it. We’ve had applications that have taken four or five more years because they’ve been suspended for several years during the application process. It’s the exception but it happens.
Let’s go back to approval for publication. Assuming at some point, your application is approved, there’s no conflicts, there’s no other reason to refuse it. It’s met all the procedural requirements. It’s given preliminary approval by the Patent and Trademark Office, that is called “approved for publication.”
Once that trigger is met, it then moves into a status where it will a few weeks later be published in what’s called the “Official Gazette.” That is a listing (it used to be a physical publication) that contains all of the newly approved trademark applications. That’s what sophisticated brand owners use to monitor for potential trademarks that could cause infringement or that they want to be aware of and might correspond with the trademark owner. It is also, it’s the public notice of the government’s intention to grant this right to someone and it’s also the public’s opportunity to object.
Right, and that window of opportunity is generally 30 days. It’s automatically 30 days that anybody with standing could file an extension of time to grant them more time to potentially object to it or they could file an objection. Those objections and extensions are handled by that appeal board, the Trademark Trial and Appeal Board.
If nobody files an objection during the 30 day window, then your application either will become registered (again, there’s a time lapse here because you’re going through different offices and hurdles and administrative background procedures at the trademark office, but a few weeks later you would receive a registration certificate for your trademark) or, if the application was filed based on intent to use and evidence of use in commerce has not yet been submitted, the USPTO will issue a “Notice of Allowance.”
That gives you six months to provide evidence of use of mark or at the end of six months you can apply for an extension to get six more months. You can do five total extensions, giving you up to three years total, to provide the evidence of use for an intent to use application. Again, that whole time, you haven’t got the registration yet and that application might be holding up some others that are suspended because of it.
So you can see it’s a very long process sometimes, at a minimum it’s a fairly long process. The quickest really you can get a registration these days is about 6. or 7 months. That’s if you file it and there’s absolutely no problems with it, and you’re already using it, and it gets approved right away and then published without any objection, and then registered but that is the exception, by far. Most applications have some or all of the issues we’ve discussed. The average length is probably just over a year but that gets weighted down by the ones that do get suspended and can take a lot longer.
I hope this has helped shed some light on what we mean when people ask “how long will it take” and we say “it depends” or “it’ll be quite a while.” We understand that that’s frustrating. One important thing is to remember that your filing date gives you some rights. It gives you that filing receipt, that serial number, and as of that date, especially if it’s an intent to use application that you later perfected to a registration, you’ve got some rights.
Also, you have rights through using the mark and that’s a very important factor too . You want to get the registration ultimately but it takes a little bit of time.