November 2019

As we marked Veteran's day last week, it was another opportunity to thank those who have served our nation. Our firm is committed to helping veterans (and military spouses) who are entrepreneurs and small business owners. We provide pro bono trademark application services to veterans, and have been honored to help protect and register dozens of trademarks for these clients over the years. If you know any veterans whom we can thank by offering these services, please forward my contact information. 
Our local ceremony honoring Veterans last week

How long does USPTO trademark
application process take?

When brand owners prepare to file trademark applications, they always want to know "How long will it take?" They want to plan for the future, and of course they always want to get the trademark registration as soon as possible. The thing is, at the outset there's no telling how long it will take. There are so many different parts of the process and potential pitfalls that no one can accurately predict how long any one application will take. A trademark application that goes very smoothly will take about six or eight months, and a trademark application on average will take about 12 to 14 months. 

But most applications have some back and forth with the examining attorney, or some hiccup, or there is some point in the process where a response is necessary and the applicant doesn't respond on the very next day. That's why the average application takes 12 to 14 months. 

An application can potentially take much, much longer if there's a complication, a significant refusal, an opposition filed during that publication period, or if there are extensions filed - all of those can drag out the process for months or years.  I once had an application that, believe it or not, took nine years to become registered. That's because the examiner had suspended our application pending some other applications, and then it turned out that those other applications were involved in some litigation and disputes. So to sort out all of those different steps in the chain before they could finalize the status of this application took nine years total. But the applicants stuck with it, and they received a Registration Certificate years after we began.

Some rights begin as soon as the application is filed - including appearing in the USPTO records when others search for marks - so the important thing is to start the process, and to be patient. 

Three Consequences of Not Properly 
Protecting A Brand Name

There are many potential consequences and harms that could come from not properly protecting a brand name or trademark, but there's really three main risks::
  1. When you don't register a trademark, you don't appear in the USPTO's database. That means you're not taking advantage of the automatic protections and insurance that the USPTO is offering by appearing in their database, because when you're in their database, the trademark office will automatically block applications that come after yours that are confusingly similar. When you're in their database, many people are searching the database when they're coming up with a new brand names or thinking about applying for new brand names, so it may avoid situations from ever arising that the brand owner may never even find out about because they got squashed in their infancy.
  2. If somebody copies a brand name that is not registered, it generally becomes much more complicated and more expensive to deal with it and to go after that infringer, because it's not as clear cut of a case and it's more likely to get dragged out. It's more likely to involve more attorney fees, possibly going court. It's messier and it's costlier, in general.
  3. The ultimate risk for a brand, is that they could lose the brand and have to change the name. If they didn't properly clear it and they didn't properly protect it from the start, they're increasing the risk that at some point there could be a challenge and they might have to change the name or they might have to decide whether or not to fight for the name or to change the name. Neither of which is a great option, because they're both expensive. And changing the name, not only is it expensive, but it can cause damage with the clients and damage with the business' overall reputation.
These three big concerns illustrate why trademark protection, as early as possible in a brand's lifetime, is the clearly recommended course of action

Great Trademarks Are Everywhere: 
More Examples

Memorable trademarks keep your company name in front of your clients and future clients. In this podcast (less than 7 minutes), I share examples of creative trademark names, which will hopefully simulate your mind when creating new ones for your business.

Last month we celebrated our 20 year firm anniversary with a happy hour in conjunction wit the local Chamber of Commerce. Thanks to all who came!

If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2019 Erik M. Pelton & Associates, PLLC.