The process of registering a trademark is still relatively straightforward: there is a roadmap of steps that must be executed in order to successfully process an application into a registration. However, the landscape of the trademarking process itself has evolved slightly in the post-COVID world. We highly recommend you start this post, but below is the breakdown that we are providing to our own trademark clients.

        

The Trademark Process (Step By Step)

Below, we’re sharing the trademark process that our firm executes for each and every client. An important note: not every step (particularly 1-4) are required by law. However, they save our clients countless dollars every year when any application reaches step 9. More on this below; however, this is one of many reasons why we encourage every single business owner to work with an actual trademark attorney.

(PS- did you know you can research a trademark attorney’s record on the USPTO website? This is an effective way of making the most discerning decision possible for your own business).

Steps 1-4

Likelihood of confusion remains the most common reason why trademark applicants lose their applications (or subject themselves to unnecessary lawsuits). A legal due diligence search remains the #1 way to avoid such troubles.

A “legal” due diligence search is more than just a standard google/social search. This is an extensive due diligence search that an attorney runs prior to filing a trademark application, and can be performed prior to the branding process itself. And word to the wise: graphic designers, this should be a service you consider offering to your clients before the branding process begins. It will take an attorney well-versed in intellectual property law to provide accurate feedback on those reports, but those are strategic networking partnerships you can begin now that will drastically elevate your professionalism, and the professionalism you provide to your clients. 

It is difficult to articulate just how critically important this step is to not just the trademarking process, but to building any sort of business. This is the #1 reason why we see business owners undergo devastating lawsuits and more.

To date, our firm still boasts a 100% success rate with applications filed following a clear due diligence search. And, because we specifically work with entrepreneurs who are rolling the dice and willing to run risks on themselves, we do the same: we now offer “contingency agreements” for any trademark application that we are completely confident in (following the due diligence search). We consider the due diligence search of the trademarking process to be one that deserves the upmost integrity. Contact our office for more information.

Estimated timeline for Steps 1-4:

2-4 weeks (largely dependent on finding a mutually beneficial calendar date for both parties).

*Note that all estimates are in accordance with Paige Hulse Law timelines, and are not reflective of any other firm

Steps 5 and 6: Preparing Your Trademark Application

Gathering the necessary information for your trademark application is something that your trademark attorney will take care of, of course. However, you will need to take certain steps to ensure your website/storefront is prepared to file a trademark. We break this down extensively here:

What Will Your Lawyer Need Prior To Registering Your Trademark?

Estimated timeline:

1 week. Our law firm builds this into our onboarding workflow, alleviating unnecessary work for our clients later on. Typically, we will have everything we need to file at the time of our due diligence review call. The 1 week estimate is largely reflective of the rare instances where website changes are required, etc.

Pre-filing timeline estimates: approximately 4 weeks in total.

Steps 7: Trademark Application Filed and Examining Attorney Assigned

This is the biggest update to share since 2020. Pre-2020, applications would be reviewed by examining attorneys within approximately 3 months of filing the application.

Applications filed in 2020, 2021, 2022: Expect this to now take approximately 8 months. At the time of this writing (July 2022), we have found that every application filed in 2021 took 8-9 months to be assigned to an examining attorney.

A few important notes: first, the USPTO operates (generally speaking) on a “race to the courthouse” system. Meaning, applications filed first get reviewed first. Second, even though you will have a long wait before your application is reviewed by an examining attorney, because of the race to the courthouse system, you do still have arguably preeminent rights to the name. In other words, you will be able to use the name while you wait, and trademark disputes that may occur in the interim will be dictated by how the trademark application process actually plays out*.

*Please note: this is extremely case-specific. Please defer to the opinions of your counsel.

Estimated timeline:

9 months. In conjunction with the pre-filing phase, conservatively speaking, expect steps 1-7 to take approximately 10 months total.

Step 7: Examining Attorney Assigned; , Office Actions

The examining attorney assigned to review your application will make sure there are no conflicts with existing trademarks, as well as no issues with all technical requirements. Your trademark attorney should be able to advise you of the potential risks prior to filing.

If the examining attorney finds any issues with your application, he or she will issue what is called an “Office Action”. In short, an Office Action will outline any issues with your application. These can range anywhere from requiring an additional word to be added to a class description, or a substantive argument such as “likelihood of confusion”. In other words, the Office Action phase can range drastically.

For purposes of example, just last month, we received two office actions (for different applications). One required the addition of one word to a class description; the other required a substantive argument against “likelihood of confusion”. The former took 5 minutes to respond to; the latter, a 30 page argument.

The point being: this stage of the process can vacillate extremely widely, making it difficult to approximate a timeline.

But, at the end of the day, every application only gets two attempts to overcome an office action. In other words, some applications do require more than one Office Action response. If your first response is found to be lacking, the examining attorney can then respond with a second office action.

Each Office Action allows six months to respond. If your second Office Action fails, or you are out (unless you can file a request for reconsideration). This is another great reason to hire an attorney who will be able to make sure your responses are timely and thorough.

Estimated timeline:

Appx. 6 months (completely dependent on whether or not a quick change, or extensive motion is required, as well as number of office actions).

In combination with all previous steps: approximately 12-15 months+

Step 9, 10: Notice of Publication; Publication

If you pass the office action phase, you will begin to enter into the “publication phase”. After your Examining Attorney has deemed that your application is satisfactory, they will email your attorney of record notifying him/her that your application will be “published” at a certain date. Your attorney will likely email you excitedly with this news, which can understandably be a bit confusing. From a legal standpoint, this notice means that the USPTO has no further issues with your application.

If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

Within 30 days of the publishing date, anyone who believes his or her business will be harmed if we register your trademark may file an objection (or “opposition ”). An opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. An opposition can extend the time between publication of your trademark in the TMOG and registration of your trademark. If someone files an opposition against your trademark, we will let you know. You may want to hire an attorney, as oppositions are complex proceedings. No further action is taken to register your trademark until the 30-day opposition period has expired and any oppositions are resolved.

This is one of many reasons why the due diligence phase is so critically important, and why all of our clients are required to complete such a comprehensive due diligence search.

In short, if there is another company who believes they will be harmed by the filing of your trademark, they will have an opportunity to come forward and oppose it. Worse, the publication period flags your business for them, which can often lead to litigious disputes. Best to be fully aware of those potential disputes before they occur, so that you can formulate a strategic plan of action.

Estimated timeline:

2 months

In combination with all previous steps: approximately 12-17 months+

Step 11: Post-Publication; Registration

 Within about three months after your trademark publishes in the Trademark Official Gazette, if no opposition was filed, your trademark is registered. If an opposition was filed but was unsuccessful, we will register your trademark after the Trademark Trial and Appeal Board dismisses the opposition. After your trademark registers, you must periodically file maintenance documents and fees within specific time frames to keep the registration active. For information on keeping your registration active, as well as the optional Section 15 filing to enhance the legal strength of your registration, see “Post-Registration Issues.”

2022 Update: Applications filed prior to May 2021 no longer receive paper certificates, meaning, your registration will now be emailed to you (however, many law firms, including Paige Hulse Law, will provide you with a paper certificate).

Estimated timeline:

The “digital registration certificate” process is still being flushed out, and is difficult to approximate. However, anticipate this to occur 1-3 months post-publication.

In combination with all previous steps: approximately 12-18 months+

IN CONCLUSION,

Expect the trademark process to now take approximately 12-18 months, if not more. The process is not quick, and frankly, COVID has just slowed everything down. This is yet another reason why you must take action early. You don’t own your business name/logo/slogan until you register your trademark, and it can get swiped out from under you if you wait. Trademarking early is one of the best ways to protect your brand, increase the value of your brand, and cut down on the potential for lawsuits. Contact our office for more information as to what is the most prudent next step for your business.