Many people are shocked at the length of time it takes to register a trademark with the United States Patent and Trademark Office (“USPTO”). What some people do not realize though is (i) the sheer number of application filed ever year; and (ii) that every application is reviewed by a USPTO examining attorney.
In 2015, over 500,000 trademark applications were filed. On an average day, the USPTO receives 1,370 new applications. The blunt reality is that the UPSTO does not have 1,370 examining attorneys on its staff to review every application as it comes in.
Despite the sheer voluminosity of trademark applications, the average application pendency time in 2015 was only 9.8 months. However, the total time from application to registration can depend on a number of factors best explained by breaking the application process down into six steps.
Step 1: the initial application submission; approximately three months
There are multiple pathways that an application can take and each has a slightly different process. Which pathway an application takes depends on the legal basis for filing. The filing bases under federal trademark law are:
-Section 1(a) Application Based on Use in Commerce
-Section 1(b) Application Based on Intent-to-Use
-Section 44(d) Application Based on a Foreign Application
-Section 44(e) Application Based on a Foreign Registration
-Section 66(a) Application Based on the Madrid Protocol
Generally, the time line for an application based upon a foreign application or foreign registration is a much longer process than those applications based upon use in commerce or an intent to use. The application filing process takes approximately three months. During this period, the filed application is analyzed to see if the minimum filing requirements have been met. If the application requirements are met, then it is assigned a serial number which allows the applicant to check on its status during the entire application process. If the application is based on a foreign registration it must meet the following additional criteria:
-It is issued by a country that is a party to a treaty or agreement with the United States;
-It must be from the applicant’s country of origin;
-The foreign registration must be owned by the applicant that filed the U.S. application;
-The mark must be the same as the mark in the U.S. application; and
-The goods or services in the foreign application must encompass the goods or services in the U.S. application.
Step 2: USPTO reviews the application; approximately one month
Following the assignment of a serial number, the application is assigned to an examining attorney who reviews it to determine whether federal law will permit the application. If the application is based on a foreign registration of a trademark, this process can take even longer.
Step 3: USPTO publishes mark (issues suspension letter if based on a foreign application), OR issues office action letter; approximately three months OR up to twelve months (for foreign applications)
If no refusals or additional requirements are identified by the examining attorney, the mark is approved for publication in the Official Gazette (“OG”). The OG is a weekly online publication which serves to give notice to the public that the USPTO plans to issue a registration. Approximately one month after approval, the mark will be published in the OG for a 30-day opposition period. During this time, any party who believes it would be harmed by the registration may file an objection or opposition to the mark with the Trademark Trial and Appeal Board (“TTAB”). No further action is taken until the opposition is resolved. The USPTO estimates this step taking approximately three months in total
This step becomes significantly more complicated if the trademark is based upon a foreign application. If no refusals or additional requirements are identified then the examining attorney issues a letter suspending the action pending the submission of the foreign registration certificate and an English translation. The suspension process takes approximately six months according to the USPTO, and depending upon whether or not the foreign registration certificate is filed or not, could take up to another six months to issue the suspension inquiry. Assuming the applicant timely responds and submits the foreign registration certificate (another one to two months of processing) then the USPTO either publishes the mark in the OG, or issues an cffice action letter.If refusals or requirements are identified by the examining attorney, then an office action letter is issued requiring the applicant to address the issues. Within six months of the issue date, the applicant must submit a response that addresses each refusal and requirement..
Step 4: USPTO publishes mark OR issues final letter; approximately one to four months
If the applicant has timely submitted a response addressing each refusal and requirement, thus avoiding abandonment of the application, the examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied (one to two month process). If the applicant’s response overcomes the refusals then the mark will be published in the OG for the 30-day opposition period. If the applicant fails to do so, then the examining attorney will issue a final refusal letter. The applicant may respond to a final office letter by overcoming the refusals and complying with the requirements or appealing to the TTAB (one to two month process).
Step 5: Mark registers OR the Notice of Allowance is issued; approximately three months
Within approximately three months after the mark is published in the OG, if no opposition was filed, the USPTO issues a registration. If an opposition was filed, but it was unsuccessful, the registration issues when the TTAB dismisses the opposition. For applications based on foreign registration, within two months after the mark is published in the OG, a Notice of Allowance (“NOA”) is issued. The NOA is not a registration but indicates that the mark will be allowed to register after an acceptable Statement of Use (“SOU”) is filed. The deadline for filing a SOU or request for extension of time is calculated from the date the NOA is issued. If the applicant does not file a SOU or extension request within six months of the date the NOA is issued, the application will be deemed abandoned.
Step 6: USPTO reviews SOU & mark registers (foreign applications); approximately one month
The USPTO reviews the SOU and if the minimum filing requirements are met, the SOU is forwarded to the examining attorney who conducts a review of the SOU to ascertain whether federal law permits registration. If the examining attorney identifies no more additional requirements, the SOU is approved and within approximately two months after approval the USPTO issues a registration for the mark. However, if there are additional requirements that must be met, the same office action letter from earlier in the process will be issued again. Once those deficiencies are remedied, a registration will be issued within approximately two months.