Submitting an application for Registration of a trademark to the United States Patent and Trademark Office (“USPTO”) is more involved and time-consuming than most first-time applicants realize. Here, we will outline what to expect, so that you can plan ahead as you develop your brand.

The trademark application process usually takes anywhere from roughly one year to a few years.(1) The timeline all depends on what issues, if any, arise.

Trademark applications include a few crucial elements: 1) information about the mark, 2) a description of the goods or services used in association with the mark, 2) information regarding the owner, and 4) a showing of use of the mark.

Once submitted, your application will enter the legal examination phase. During this stage, the USPTO will first review the application for basic sufficiency. After a few months, your application will be assigned to an Examining Attorney, who will spend an additional few months conducting a legal examination.(2) In addition to looking at the application itself, the Examining Attorney will search the USPTO database for similar trademark registrations or applications that predate yours. The entire legal examination process takes about 10 months, after which the USPTO will either issue an approval of your application or an Office Action.

There are a few common reasons that an Examining Attorney would reject an application. For instance, they might determine that the description of the goods or services is too vague and provide suggestions for the applicant to adopt. Other types of rejections are for substantive legal issues, such as where a mark is “merely descriptive” or there is a “likelihood of confusion” with an existing registration.(3) Applicants will have the opportunity to respond to Office Actions up to six months after issuance.(4) There is no option to extend that deadline and failure to respond will result in the application being abandoned.(5)

If the Examining Attorney allows your application, either after their first legal examination or after reviewing a response to an Office Action, the application will move to the next step.

At that point, your application will be subject to a brief secondary review and then placed in the publication phase. Publication is a process where the USPTO posts your trademark application in their Gazette for 30 days. During this time, third parties will have the opportunity to step forward and oppose your mark based on certain legal grounds. The most common reason for an Opposition is where that third party believes there is a likelihood of confusion with their trademark, which may or may not have come up in the Examining Attorney’s database search.

Intent-to-Use application are subject to an additional step after the publication phase. For intent-to-use applications, you do not need to show use of the mark at the time of submission, but you still have to show use prior to registration.(6) So, after an Intent-to-Use application passes publication, the USPTO will issue a “Notice of Allowance.” This requires applicants to submit proof that the mark is in use, or to file an Extension of Time, within six months. Up to five extensions are allowed, adding up to no more than three years. An intent-to-use application is a good idea where you have immediate plans to develop your brand and want assurance that your mark is secure.

If no issues arise, about three months after approval for publication, your registration will issue and the USPTO will mail the official Registration Certificate.(7)

After registration, the USPTO will require you to submit regular maintenance filings. The first of such filings is due between the fifth and sixth years after registration, then ten years after registration and every ten years after that. Maintenance filings require registrants to show that their mark is in use for each one of the goods and services listed in the registration. These deadlines are non-extendable and failure to file maintenance will result in your registration being abandoned.

Small issues can turn into bigger ones when filing applications for registration of a trademark in the USPTO, so best practice would be to hire a qualified attorney to prepare and submit the application on your behalf. If you do choose to file yourself and end up with a rejection, don’t give up before asking for a second opinion! Some rejections might seem hopeless, but can be fixed by an experienced practitioner.

(1) The goods news is, that soon as you file, the public will be on alert that the trademark has been applied-for. So, you idea is pretty safe the moment you file an application.

(2) Sometimes, the delays are longer for trademarks that have been selected to examine in a group, or if they were marked as referring to something illegal (a common example would be applications that reference marijuana).

(3) A 2(e)1 rejection is that a mark is “merely descriptive” of the goods and services included in the application, like an application for the mark “creamy” for a yogurt brand. A 2(d) rejection is for marks where there is “a likelihood of confusion” with your mark and a registration or application that already exists.

(4) In some rare instances, responses are due in 4 months, so it is best to check the deadline set forth in the introduction of the Office Action.

(5) There are some ways to resuscitate an abandoned application, but the grounds are limited and subject to a strict timeline (an example would be if you did not receive the Office Action and can attest thereto).

(6) All applications, unless based on a foreign application or registration, must show use prior to obtaining a registration in the United States.

(7) All communications will go directly to your attorney or the correspondence address listed.