The Trademark Application Process

By Tennell Lockett

During my practice as an IP lawyer, I have noticed that my trademark clients routinely have a misapprehension about how long the trademark process will take. In fact, once, after what I thought was a thorough consultation with a client about their soon-to-be-filed trademark application, the client leaned back and said, “Okay. Good. I think I understand everything. So what am I looking at? A couple weeks? A month? How long before this thing is finalized?” I realized then that: 1) the IP bar, myself included, needed to do a better job informing clients and the public about this topic; and 2) my consultation session was not over. In that vein, I thought a brief overview of the application process might be helpful.

As an initial matter, the United States Patent and Trademark Office will very seldom, if ever, immediately grant a federal trademark application after it is filed. In fact, it generally takes up to 5-8 months (or more) before a trademark office official, referred to as an Examining Attorney, will pick up your application to formally review it and start the substantive examination process. Once he has reviewed your application, the EA determines whether there are grounds to reject your application or whether other modifications or clarifications are necessary. If the EA finds grounds for rejection, modification or clarification, the EA will send you a response, called an Office Action, soliciting your response to his findings. These Office Actions are routine and you can expect at least one Office Action as a matter of course during the application process. You or your attorney will respond to the EA’s Office Action, either providing the EA with arguments to overcome his rejection, or providing clarification or amendments to your application to overcome his cited objections. There may be multiple rounds of this back-and-forth between you and the EA during this period.

Importantly, you have 6 months from the time any Office Action is mailed to respond to it. If you fail to timely respond, your application will go abandoned. There is a procedural mechanism that allows you to attempt to revive the application after it has gone abandoned, but you will incur additional filing fees and will need to submit compelling explanation and argument for your delinquency.

If the examiner is satisfied with your amendments, explanations and comments, the examiner will approve your mark to be published for opposition.

Your mark is typically published for opposition within 30 days of the examiner’s approval of the mark for publication. Your mark will publish in the USPTO’s Official Gazette for a 30-day opposition period. Any party who believes it would be harmed by the registration of your mark may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. If the mark is opposed, the timeframe for that process varies, but it is usually a considerably lengthy period as TTAB oppositions are separate administrative proceedings and can easily take up to 6 months and substantially longer.

Within approximately 3 months after the mark published in the Official Gazette, if no opposition is filed, the USPTO issues a registration for your mark.

 

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