As a company domiciled in the United Kingdom looking to file an American trademark application, there are 2 options:
- You can file a trademark application through an international trademark system called the Madrid Protocol.
- You can hire an American trademark attorney to represent you and file the application on your behalf.
There are advantages and disadvantages to both of these choices, and the subsequent timelines factor into this decision as well. It is important to note that there is no possibility to ‘rush’ an application and that the timing of the trademark application’s review is entirely up to the discretion of the examining offices. Depending on the method selected, it will take a UK-based business approximately twelve to eighteen months to file and register a trademark in the United States.
Filing through the Madrid Protocol
The Madrid Protocol, formalized in 1996, is an excellent option for companies looking to file trademarks in multiple countries and looking to avoid extensive filing fees in each jurisdiction. While this international system streamlines the application process internationally, not all countries are a part of the Madrid Protocol. Additionally, a refusal of the original application can affect the other applications as well. Click here to learn how to avoid a Madrid Protocol trademark registration refusal in the United States.
To begin, you would file the application through the typical channel in your country of origin–in this case, the United Kingdom. When submitting the application, you would indicate that you are seeking international registration and designate the countries in which you would like to make parallel filings. The local office, which would be the United Kingdom Intellectual Property Office (or UKIPO), then passes along the application to the World Intellectual Property Organization, which handles all Madrid Protocol filings. After approximately three to four months, WIPO will approve the application for registration and extend the application to the other countries you have requested. The following approval is up to the discretion of each nation according to their trademark laws and the turnaround time will vary according to each location; generally speaking, each national office has twelve to eighteen months to accept or refuse the registration. While this turnaround time is typically quicker, there is a possibility your trademark could take close to two years to register if the United States Patent and Trademark Office takes the full amount of time to review the application.
Filing through US Counsel
If you would rather bypass the WIPO waiting period, another way for a company based in the United Kingdom to file an American trademark application is directly with the assistance of an American attorney. Once engaged with US counsel, the trademark lawyer will file a trademark application on your behalf. After the application is submitted, it will remain stagnant for about three to four months, until it eventually reaches the desk of an examining attorney. The examining attorney will then review the application, and if approved, the application will be forwarded into a publication period of thirty days. While published, any third party who believes your trademark may infringe upon theirs has the opportunity to oppose your application. Once the thirty days is complete, the application returns to the examining attorney for a final review. When approved for registration, the hired attorney will receive a notice via email about sixty days after, and the certificate will be issued and sent through the mail.
A variation to this application process rests upon the filing basis indicated within the trademark application. If you already have a UK or EU trademark application or registration, you have an advantage–that filing can be used as the basis for an American trademark registration. This would allow for the trademark to register without needing to prove commercial use within the United States as long as the foreign application is accepted and the registration is properly maintained.
If your business does not own any foreign trademarks, there are two other options available: intent to use or in use filings. When filing a trademark with an intent to use basis, you must submit a secondary proof of use filing to provide evidence that your trademark is legitimately being used in commerce within the United States. Once this filing is accepted, it typically takes an additional sixty days for the registration to be issued, potentially adding two months to your application timeline. The faster route is to file an application for a mark that is already in use as the proof of use filing is then no longer required; of course, the in-use filing basis is only an option for those who already utilize their mark within the American marketplace. Those who do already have sales can enjoy a faster turnaround time that can be less than one year.
This timeline of about eight to ten months, however, is highly subjective due to the possible hiccups that may occur along the way. For example, this timing would be greatly extended if the examining attorney were to issue an Office action, or a preliminary refusal, after reviewing the application. There is a six-month period during which an Office action response can be filed, and then typically an additional three to four weeks waiting on the result of that response. Further, should your application receive an opposition during the publication period, the subsequent negotiation between the two parties will also prolong the application process. What is typically an eight to ten-month process could be extended to well over a year depending on what responses the application receives, whether that be from the examining attorney or an outside party.
Ultimately, the time it takes a British-based company to register an American trademark is reliant on several factors. First, the method of application plays a large role on this timeline: filing through the Madrid Protocol may retain the ease of a familiar initial application, but the WIPO approval period in addition to the review time of an American examining attorney can add extraneous months onto your timeline. Additionally, this process, which can take twelve to eighteen months, may not be the best selection for a company seeking a registration in only the United States. Filing through a US-based trademark lawyer is another and a potentially quicker method for obtaining an American trademark registration, but this process is exclusive to the United States.
Overall, there is no risk-free application method, and a business based in the United Kingdom is best equipped to deal with issues such as application technicalities, Office actions, and potential oppositions with experienced counsel on its side. To guarantee the quickest turnaround and attainment of a trademark registration, it is in the company’s best interest to find a proven trademark attorney to assist with efficiently navigating the application process.