The timeline for federal trademark registration typically takes one year but that often depends on the strategy for filing. There are generally two types of trademark registration filings: (1) in-use; and (2) intent to use. An in-use filing is self-explanatory, you are already using the trademark in commerce. An intent-to-use application typically takes longer because we submit evidence of use at a later stage. Irrespective of filing type, there are six milestones to watch for in the trademark registration process.
#1: Searching the Trademark Candidate
The eligibility of a candidate trademark for federal registration is determined by the federal trademark register which includes existing, live registrations and earlier-filed pending applications. Typically a client will present several trademark iterations for searching. It takes about 15-45 minutes for an experience trademark attorney to conduct a preliminary clearance of the mark for registration or determine it will have issues. If the investment in the brand is a multi-million advertising campaign and possible international protection, then a more extensive search makes good sense. However, for most trademark filings, the mark should be cleared within a day or so. Trademark filings are time-sensitive. Ownership of federally registered trademarks is typically determined by the earliest filing filing date.
#2: Filing the Application
Timing-wise, this is the most important milestone of the trademark registration process. Filing early is critical. We have direct experience in seeing a client lose trademark rights by filing their application later on the same day as a competitor.
The trademark application is filed electronically and a confirmation receipt is immediately received. For an intent to use application, only: (1) the trademark; (2) the recitation of products/services; (3) declaration; and (4) payment is required to secure a filing date. It should be noted that for a number of reasons, trademark should only be filed in the name of a corporation or company, not in the name of an individual or partnership.
#3: Examination
Trademarks are substantively examined by a trademark examining attorney at the USPTO approximately three (3) months after filing of the application. Common refusals include:
- Likelihood of confusion with an existing registration or earlier filed trademark application;
- The mark is merely descriptive and conveys a characteristic, ingredient or purpose of the underlying product or service sold under the mark;
- The mark is generic and incapable of trademark significance; and
- The recitation of goods or services is unclear and needs correction.
If the mark is initially refused registration, the attorney has six months to respond but unless there is a good reason to delay, the turn-around is much faster. For many issues, a simple call to the USPTO trademark examining attorney may address the issue.
When the USPTO trademark examining attorney finds the application has no issues barring registration, an important milestone has been reach. The trademark examining attorney will approve the trademark application for publication.
#4: Publication for Opposition
About three months after the trademark is approved for publication, it is published in the Official Trademark Gazette. This previously was a hard-copy publication that trademark attorneys would scour to make sure no pending application would conflict with their existing clients’ registrations. Now there are automated trademark watch services. If a party believes it would be damaged by registration of the trademark it may file an opposition with the Trademark Trial and Appeal Board (TTAB). If the party cannot initially decide whether to file an opposition, they can (without cost or disclosing why) file an Extension to Oppose the trademark application.
Trademark oppositions are rare but we have handled many of them. They are administrative proceedings governed by the federal rules of civil procedure and include discovery and trial phases. Most of the discovery is done with requests for admissions and interrogatories but depositions may be taken. When the matter comes before the TTAB judges’ panel, it is usually just attorneys that argue the record of evidence obtained through discovery. TTAB proceedings may take a couple years.
When the opposition window has closed, and not opposition or extension to oppose has been filed, the client can rest much easier. This is a positive milestone to reach in the trademark registration process.
#5: Registration
Assuming no opposition is filed, the trademark (if filed as an in-use application) will register about three months later. If the trademark was filed as an intent-to-use application, then instead of a registration grant, the trademark application is allowed. This means the trademark registration will be guaranteed provided the trademark applicant timely submits evidence of use of the trademark in commerce. There is a six month deadline to submit this evidence but it can be extended for up to three years with extension fees.
Once registered, the federal trademark symbol can be used. Therefore, prior to registration, we would display SMITH & HOPEN™ while post registration we have the right to display SMITH & HOPEN®. Examples of two federal trademark certificates of registrations are shown below:
Federal registration confers a number of benefits including:
- National rights
- Incontestability (after 5 years)
- Enhanced Remedies
- Presumption of Validity
- Constructive Notice
- Importation Protection
- Federal Court Jurisdiction
Federal trademark registration is also a powerful asset in uniform domain name dispute resolution proceedings.
#6: Renewal
Federal trademark registrations must be renewed between the 5th and 6th year after registration although a 6-month grace period is available with a fee. The next renewal is between the 10th and 11th year from registration and then renewals occur every 10-years. Unlike a patent or copyright which has a finite lifetime, properly maintained trademark registrations may last indefinitely.
An important advantage of federal trademark registration is incontestability. Upon the first renewal, a Section 15 Affidavit of Incontestability can usually be filed which makes the trademark registration immune to all infringement defenses except:
- The trademark has become generic
- The mark has been abandoned
- The trademark was fraudulently acquired
In conclusion, these six milestones to trademark registration take approximately one year. It is critical to clear and file a trademark candidate as soon as possible to secure the best possible ownership rights. If you have any questions on the trademark process, do not hesitate to contact us or even book a call online.
