The USPTO trademark registration timeline for both an “actual use” trademark applications and an “intent to use” trademark application are discussed below.

To start the trademark registration process with the United States Patent and Trademark Office (USPTO), a trademark applicant is required to file a trademark application with the USPTO. The application should include a clear drawing of the trademark, a listing of the goods and/or services the trademark will be used in connection with, and the applicant’s name and address. The applicant must also pay the required government fee for filing and examining the trademark application. Additionally, the trademark applicant must provide a specimen of the mark as used in commerce and answer a series of questions about the mark and the applicant’s use of the mark.  If the trademark applicant has yet to use the proposed trademark in commerce, the person or entity may file an “intent to use” (ITU) trademark application.

Registration Based on Use in Commerce

Registration based on use in commerce applies when you are currently using the trademark in commerce with every good or service contained within your application. The trademark applicant must give the date they first started using the trademark and a specimen that shows how the mark is actually being used.

(1) Application Filled

First an individual must file a federal trademark application. Once this is done, your application will be assigned a serial number. The applicant may check the status of your application at any time throughout the process by using serial number.  The trademark applicant may also use this trademark serial number to enroll in the Amazon Brand Registry program.  Most other online retail platforms will require an active trademark registration to enroll.

(2) USPTO Reviews Your Application

After about 6-8 months months (depending on current USPTO processing times), the application will be assigned to an examining attorney at the USPTO. The examining attorney will conduct a review of the application to determine whether federal trademark law will permit the mark to be registered. After about 1 month, two options could happen

(a) USPTO Publishes the Mark

If there are no trademark refusals or other requirements that are needed, then the examining attorney will approve the mark for publication in the Official Gazette. This gives notice to the public that the USPTO plans to issue a registration to the mark. The mark will be published for a 30 day opposition period. These 30 days give any owner of a registered mark time to file an objection/opposition with the Trademark Trial and Appeal Board to state that their mark would be harmed by the registration of the applicant’s mark. If this occurs, no further action will be taken until this opposition is resolved. If there is no opposition or after an opposition is solved, then about 3 months later, the USPTO will issue a registration of the mark.

(b) USPTO Office Action

If a trademark refusal occurs or other requirements are needed, the USPTO examining attorney will issue an office action stating the reasons for refusal or the other requirements needed. The applicant must respond to this letter and address each refusal and requirement within three (3) months. If the applicant fails to respond to the office action within three (3) months, then the application will be abandoned and the mark will not be publish. If the application is abandoned, the applicant will have two (2) months from the time the USPTO rules the application abandoned to revive the application, otherwise, a completely new application for the mark must be filed. If the applicant properly responds to the office action in time, the examining attorney will then review the response to determine if all previous refusals or requirements have been satisfied.

After 1-2 months of a properly submitted response to the office action, either (1) the examining attorney will approve and publish the mark in the manner stated above, or (2) the USPTO will issue a final refusal letter (Office Action 2). This final letter means that applicant’s response has failed to overcome all the refusals or requirements, and this is the final letter to state that the application has failed in this regard. An applicant may respond to this final letter by either (1) overcoming and complying with the requirements in the letter, thus having the mark published as above, or (2) appeal to the Trademark Trial and Appeal Board. Either action by the applicant must occur within 6 months or the application will be abandoned. If appealing the final letter, after about 1-2 months from submitting the appeal, a final determination will be rendered regarding the application.

(3) Required Maintenance After Successful Registration

(a) Between year 5 and 6 after successful registration, the mark owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure by the owner to file these will result in the cancellation of the trademark registration.

(b) Between year 9 and 10 after registration, the owner must file a Combined Declaration of Use or Excusable NonUse and a Application for Renewal under Sections 8 and 9. Failure by the owner to file these will result in either cancellation or expiration of the trademark registration.

Registration Based on Intent to Use

Registration based on intent to use a trademark applies when the applicant has not yet started to use the trademark in commerce.

(1) Application Filled

First, an individual must file a federal trademark application. Once this is done, the application will be assigned a serial number. The applicant may check the status of the application at any time throughout the process by using serial number.

(2) USPTO Reviews Trademark Application

After about 6-8 months, the application will be assigned to an examining attorney at the USPTO. The examining attorney will conduct a review of the application to determine whether federal trademark law will permit the mark to be registered. After about 1 month, two options could happen

(a) USPTO Publishes the Mark

If there are no refusals or other requirements that are needed, then the examining attorney will approve the applicant’s mark for publication in the Official Gazette. This gives notice to the public that the USPTO plans to issue a registration for the mark. The mark will be published for a 30 day opposition period. These 30 days give any owner of a registered mark time to file an objection/opposition with the Trademark Trial and Appeal Board to state that their mark would be harmed by the registration of applicant’s mark. If this occurs, no further action will be taken until this opposition is resolved. If there is no opposition or after an opposition is solved, then about 3 months later, the USPTO will issue a notice of allowance for the applicant’s mark.

(b) USPTO Office Action

If a refusal occurs or other requirements are needed, the examining attorney will issue an office action stating the reasons for refusal or the other requirements needed. The applicant must respond to this letter and address each refusal and requirement within three (3) months. If the applicant fails to respond to the office action within three (3) months (as of December 3, 2022) then the application will be abandoned and the mark will not be publish. If the application has been abandoned, the applicant will have two (2) months from the time the USPTO rules the application abandoned to revive the application, otherwise, a completely new application for the mark must be filed. If the applicant properly responds to the office action in time, the examining attorney will then review the response to determine if all previous refusals or requirements have been satisfied.

After 1-2 months of a properly submitted response to the office action, either (1) the examining attorney will approve and publish the mark in the manner stated above, or (2) the USPTO will issue a final refusal letter (Office Action 2). This final letter means that the response has failed to overcome all the refusals or requirements, and this is the final letter to state the application has failed in this regard. An applicant may respond to this final letter by either (1) overcoming and complying with the requirements in the letter, thus having the mark published as above, or (2) appeal to the Trademark Trial and Appeal Board. Either action by the applicant must occur within 6 months or the application will be abandoned. If appealing the final letter, after about 1-2 months from submitting the appeal, a final determination will be rendered regarding the application.

(3) Notification of Allowance Issued

2 months after the mark has been published in the Official Gazette, a notification of allowance (NOA) will be issued. This is not the same as a registration of the trademark. A NOA indicates that the mark will be allowed to be registered once a valid statement of use is filed. A statement of use must be filed within 6 months of the notification of allowance, otherwise, the application will be abandoned. One of three things will occur within the 6 months after the NOA:

(a) a statement of use will be timely filed once the applicant is using the mark in commerce on all of the goods or services listed in the NOA;

(b) if the applicant has yet to begin using the mark in commerce for the goods or services in the NOA, the applicant may file a 6 month extension for the statement of use. An applicant may file a total of 5 extensions for the application.

(c) if the applicant fails to either file a statement of use or an extension, then the application will be abandoned.

(4) Review of the Statement of Use

1 month after filing a statement of use, the USPTO examining attorney will determine if federal trademark law permits registration of the mark. One of two things will occur after the examination is done:

(a) the statement of use is approved and the mark is registered;

(b) the examining attorney issues an office action, in the manner stated above. If this occurs, the steps above must be followed.

(5) Required Maintenance After Successful Registration

(a) Between year 5 and 6 after successful registration, the mark owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure by the owner to file these will result in the cancellation of the trademark registration.

(b) Between year 9 and 10 after registration, the owner must file a Combined Declaration of Use or Excusable NonUse and a Application for Renewal under Sections 8 and 9. Failure by the owner to file these will result in either cancellation or expiration of the trademark registration.