How Long to Get a Trademark Registered?
Many times clients ask me, “How long will it take for me to get my trademark?” The real answer is you get your trademark when you start to use it, and I’ve explained that in other posts.
Today I’m going to answer the real question, “How long will it take me to get my trademark federally registered, so that I can use the circle R?”
The answer is it can take as little as eight months, or it can take years. Eight months is the fastest time that the USPTO (United States Patent and Trademark Office) commits to—and that’s if everything goes smoothly. To understand why it takes that long, we will walk through the steps of what happens when an application is submitted to the Trademark Office.
Submitting an Application to the Trademark Office
Trademark registration applications should be submitted electronically. If you don’t submit them electronically, it can cost as much as $100 more for each class of goods or services that you’re trying to register in. It also slows down the process. The best option and the best cost savings is to always submit the application electronically.
Once the application is submitted, there are three months of pre-examination processing that goes on in the Trademark Office. At the end of three months, it’s assigned to an Examining Attorney.
Now, if you’ve been working with your own attorney in selecting a trademark, and you know that your trademark is unique to your goods and services (and that it is not merely descriptive of your goods and services), then the Examining Attorney should be able to examine your application relatively quickly in a couple of weeks. The Examining Attorney is going to search the trademark database to make sure that there are no other applications or registrations with marks that sound similar to yours and would cause what’s referred to as Likelihood of Confusion.
If the search comes up with no interfering or conflicting marks, then the Examining Attorney approves it for publication. Once it’s okay for publication, it goes through some more processing. That time period is about one to two months, which leaves you at about the five-month benchmark before the mark is published in the Official Gazette.
Once it’s published in the Official Gazette, anyone who thinks that your trademark will damage their business has 30 days to respond to the Trademark Office for what’s called an “Opposition” to be filed with the Trademark Trial and Appeal Board. As I stated, if you’ve been working with your attorney and you’ve picked a mark that’s not likely to cause confusion, it should go straight through to the 30-day period without anybody filing any oppositions to your trademark.
Once the 30-day period elapses, you can breathe easy. It takes about a month for the Trademark Office to make sure that no oppositions were lost in the mail. Next, they send the information to the Publication Office for your trademark Certificate of Registration to be prepared. At about the eight-month point, your trademark is issued and the certificate is mailed to you. That’s the best case scenario from start to finish: eight months. In the meantime, while you’re using your trademark, you’re going to have common law rights to it. Once you have that registration number in hand and your certificate, you can start using the circle R.
What happens if your application was submitted before you actually were using it in commerce? Instead of getting a Certificate of Registration, you get a Notice of Allowance. You have six months to show that you’re actually using your trademark, and to submit a specimen showing actual use. Unfortunately, submitting the specimen requires an extra $100 fee. At the end of six months, if you haven’t used the trademark in commerce, you have to ask for a six-month extension, which will cost you $150 for each class that you’ve applied in. You can get five extensions so that the period that you have to submit a specimen is three years.
We’re now at three years and eight months. Hopefully, you submitted your specimen in time, and you’ll have your registration. That’s the worst case scenario if you have a trademark that doesn’t have any issues or whether it’s been rejected because there’s a Likelihood of Confusion. However, if you are rejected for a Likelihood of Confusion or somebody files an opposition, it can take years to dig out of that hole, which is why it’s always a good idea before you start using your trademark to make sure that it is free and clear for use—and that no one will oppose it under the idea that it’s likely to be confusing to the consumer.
It is best to discuss your specific situation and questions with an experienced trademark attorney.
Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016