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Once you and your attorney are confident that your trademark does not conflict with any other pre-existing mark, the real substance of the process begins. You’ll submit a trademark application to the government, where it goes into a queue for an examining attorney to review. Standard procedure is a wait of three to four months before your application gets to an attorney – there are a lot of applications coming in, and only so many examiners to handle them.
The examining attorney will then conduct a thorough review the application. They’ll be checking for a couple of things: accuracy on the application; complete, detailed information; and, critically, potential conflict with an existing mark. Your trademark lawyer will always determine to the best of his ability that no potential conflicts exist before submitting the application, but your chances of conflict are higher if you rely strictly on, say, a general search engine, or the baseline tools provided through the USPTO. If a potential conflict arises, you’ll be issued an Office Action to respond to – more on these later.
In the ideal situation – no conflicts with existing marks – your trademark will then move to the publication stage. This is a way of publicly announcing your pending mark, to open the floor to any objections – from anyone, trademark holder or not. New trademarks are published weekly and open to objection for 30 days – but it’ll probably take a month or two for your mark to move from the examiner to the publication stage. At this point, barring any Office Actions, we’re around the nine to ten month mark from date of filing.
Once your trademark makes it through the 30 day open dispute period, your mark is, for all intents and purposes, approved – the USPTO just needs to make it official. Again, the USPTO is a busy agency – the certificate of registration for your trademark will probably be issued within two to three months after publication. If you’re doing the math here, 12 months is very much at the inside of the range for each of these time frames combined – possible, but not guaranteed.
Potential Delays For Your Trademark Application
A couple of potential speed bumps arose throughout that breakdown – let’s take a look at how those may affect your trademark registration time frame. First, Office Actions. An Office Action is a query from the USPTO that may be a request for clarification, a required correction (for instance, moving a product or service from one classification to another), or a potential conflict or overlap with an existing mark. You’ll have six months to respond to an Office Action, at which point your application will either move forward or be denied. Disputes during publication may also hold up your trademark’s approval, depending on the veracity and legitimacy of any claim. And if you filed your mark as “intent to use,” you won’t be approved until you’ve filed a follow up to your initial application, proving use of your mark in commerce. You have a year to do this – again, add that on to the overall time to approval, if you’re filing on an “intent” basis.
Obligations Once a Trademark Registration is Obtained
Moreover, keep in mind that the process isn’t truly over once your mark is approved. You’ll be responsible for policing any unauthorized use of the mark – think of that as a 24/7 job, since once a mark is used too often by third parties or falls into generic use, it’s subject to cancellation. Other time frames to keep in mind – your first renewal is due during the fifth year the registration is in effect (in other words, after five years, but before the sixth year starts), the next renewal is due during the ninth year of registration, and subsequent renewals are due every tenth ensuing year. Don’t forget those time frames – it’s your responsibility to adhere and the USPTO will not send reminders that you need to file a renewal.