Business owners in Chicago, Illinois often want to know the expected timeframe for registering a trademark with the United States Patent & Trademark office (USPTO), from initial filing to receiving the federal trademark registration certificate. The timeframe for the USPTO trademark registration process, from submitting the trademark application to receiving the trademark registration certificate issued by the USPTO, can vary depending on several factors. Generally, the entire process can take anywhere from 10 months to a few years.
Once we submit your trademark application, the USPTO typically takes about 6- 8 months to assign an examining attorney to review your application. The examining attorney will then determine if your application meets all legal requirements and if there are any conflicting pending or registered trademarks that may prevent the successful registration of your trademark.
If the examining attorney issues an Office Action to address any objections or issues, you will have 3 months to respond. The time it takes to resolve these issues can vary, and multiple rounds of correspondence may be necessary.
After your application passes examination, the USPTO will publish your mark in the Trademark Official Gazette (TOG), initiating a 30-day period for third parties to file oppositions. If a trademark opposition is filed, the timeframe for the opposition proceedings can be lengthy, ranging from several months to a few years, depending on the complexity of the case and the parties involved.
If no opposition is filed or the opposition is unsuccessful, the USPTO will issue an official tradeamrk registration certificate for trademarks based on actual use, or a Notice of Allowance for intent-to-use applications. For intent-to-use applications, you must file a Statement of Use within 6 months (with possible extensions) to demonstrate actual use of the mark and obtain the registration.
During the federal trademark registration process with the USPTO, applicants may encounter several common problems that need to be addressed, which may delay the trademark registration process:
Likelihood of Confusion
: The USPTO examining attorney may find that the applied-for trademark is confusingly similar to an existing registered trademark or pending application
. This can result in the refusal of the application, and the applicant may need to provide arguments and evidence to distinguish their trademark from the cited one.
: If the applied-for trademark is considered merely descriptive of the goods or services, the examining attorney may refuse registration. The applicant would need to argue against the descriptiveness, or prove that the trademark has acquired secondary meaning through extensive use
Specimen Refusal: The examining attorney may refuse the provided specimen of use if it fails to demonstrate the proper use of the mark in connection with the specified goods or services. In such cases, the applicant must submit a new, acceptable specimen of use.
Improper Identification of Goods or Services
: The examining attorney may find the description of goods or services in the trademark application
to be unclear, overly broad, or inaccurate. The applicant will need to revise the description to accurately and specifically identify the associated goods or services.
Disclaimers: The examining attorney may require the applicant to disclaim a portion of the mark that is considered generic or descriptive. The applicant must either agree to the disclaimer or provide arguments and evidence to show why the disclaimer is not necessary.
Responding to Office Actions: If the examining attorney issues an Office Action raising objections or issues with the application, the applicant must respond within six months. Failure to respond in a timely and appropriate manner can lead to the abandonment of the application.
Opposition Proceedings: If a third party files an opposition against the mark’s registration during the publication period, the applicant must address the opposition and provide evidence to defend their application before the Trademark Trial and Appeal Board (TTAB).
In summary, the USPTO trademark registration process timeframe can be quite variable, depending on factors such as application complexity, opposition proceedings, and the applicant’s responsiveness to Office Actions.