1. Who Can Apply for a Trademark?
2. Ways to Speed up Your Trademark Application and Registration
3. Trademark Timeline

How long does it take to register a trademark? This is one of the first questions people ask when considering protecting their brand.

Applications for federal trademarks must be submitted to the United States Patent and Trademark Office. The USPTO website explains that the complexity of the process makes time-scales difficult to predict. While some registrations are completed within a year, some do take years to finalize. The average time from filing to completion (known as pendency) is 9.5 months, according to the USPTO's own records.

Some of the factors that will affect the speed with which an application is processed include:

  • The level of experience of the examiner overseeing the process
  • The quality of the application itself
  • The use of relevant software allowing applicants to receive updates from the USPTO
  • The likelihood of issues that need addressing with descriptive research such as demonstrating the use of the mark commercially or resolving conflicts

It usually takes between 12-18 months for a trademark to be registered, with some cases stretching to 2 years. The length of the process does not affect the ‘effective' date of registration which will be the original filing date.

Who Can Apply for a Trademark?

Trademark protection will only be an option for businesses whose names operate as a trademark rather than just a way to identify the business. The trademark can be both, as in the case of Nike, Inc. which is known as both a manufacturer of shoes and the trademark of the shoes themselves.

If the name of the business isn't associated with its products or services, trademark protection will not be possible. If a business has a corporate name such as BizCorp, but uses a different brand, such as Stuff and Things, to promote its services, then only Stuff and Things will be eligible as a trademark. As BizCorp isn't being used as a trademark then it cannot be protected.

Ways to Speed up Your Trademark Application and Registration

  • Do thorough research into your trademark to identify possible conflicts
  • Make your application as strong as possible
  • Use a specialist IP attorney – doing it yourself is a false economy
  • File as soon as you can, even before you have started using it commercially

Trademark Timeline

  1. The process begins when you file an application with the USPTO.
  2. Applications will be examined by an attorney who will be assigned within three months of filing. They will ascertain that the application has been completed fully and check for any issues which could prevent it from being approved.
  3. If there are any issues, the examiner will issue an Office Action, usually within a month of the examiner being assigned.
  4. If you receive an Office Action, you will need to respond within six months to keep your application active. Failure to do so will result in your application being deemed ‘abandoned' and you will have to start the process again.
  5. The examiner will either accept your submission or issue a second or final Office Action within 1-2 months if your response is unsatisfactory which will need a response within six months.
  6. In the event that you receive a final Office Action from the USPTO, you can ask for it to be reconsidered or file a Notice of Appeal with the Trademark Trial and Appeal Board.
  7. Within 1-2 months of all Office Actions being resolved, your application will be published in the USPTO's Official Gazette to allow objections from third parties who have 30 days to oppose your mark.
  8. If there are no objections, or if they are resolved, then your mark will be federally registered with the USPTO within 2-3 months and you will receive your Certificate of Registration. If you aren't already using your mark, you will receive a Notice of Allowance, meaning that you will need to file a statement of use within six months to complete the registration process.
  9. Between the fifth and sixth year after registration, you will need to make a Declaration of Continued Use to show that you are still using the mark. You will need to do this again between the ninth and tenth year including an Application for Renewal to prevent cancellation of your trademark.

If you need help with registering a trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.