If you are seeking to register your trademark through the USPTO, then I applaud you for taking the necessary steps to protect your brand. However, what you may not know is that the overall process is a lengthy one. While quite time consuming, you should welcome the wait because the overall process is to ensure that there isn’t a “likelihood of confusion,” which is the basis of an infringement lawsuit, between your mark and that of another.
Trademark applicants should expect the application process to range anywhere from six months to one year before registration is issued. Here is an overall breakdown of that process:
- Clearance Search and Analysis
It is extremely important for all trademark applicants to do their due diligence before starting the application process. A lack of effort to discover whether or not your mark is confusingly similar to someone else’s mark beforehand can result in a waste of time and resources from filing an application that will ultimately be denied. Remember, a mark does not have to be identical for its use to amount to infringement, but that’s another topic for another time.
While you can conduct a search on your own, it is best to let an attorney provide you with a more comprehensive clearance search along with their legal opinion. The attorney’s legal opinion is valuable because it contains information as to whether the mark you are seeking to file is already infringing on someone else’s mark and whether or not there is a high likelihood of securing registration. This step typically takes a few days to a week. It’s important to take this step now because an examining attorney will conduct their own search later on in the process and you don’t want any surprises down the road.
- Preparation of Application
Once the attorney has rendered their legal opinion and you are given the “all clear,” your application will be prepared and submitted to the USPTO. At this point, your attorney will meet with you to discuss their findings of the search, inform you of what classes are best for you to register your mark, and answer any questions that you may have before paying the required fee and filing your application.
- Examination Period
After your application has been submitted to the USPTO, you should expect a waiting period of approximately three months before any activity will be made regarding your application. At this stage of the process, your application is waiting to be assigned to Examining Attorney. Although your status is pending, your application will appear in the USPTO database and provide notice to others trying to register the same or a substantially similar mark as the one that you have filed.
When the Examining Attorney has been assigned to your application, this person will communicate with you or your attorney throughout the remainder of the application process. Now, the Examining Attorney will begin reviewing your application and, among other things, will look for a likelihood of confusion between your mark and that of another trademark owner. After their search and analysis has been completed, there are either two things that may happen: the attorney may find that your trademark can proceed to publication because no issues were found and you will move on to step 5; or you will be issued a Non-Final Office Action, discussed in step 4.
- Issuance & Response to an Office Action
If your Examining Officer finds any issues regarding your application, they will issue a Non-Final Office Action, which is essentially a temporary refusal. You or your attorney will have 60 days to respond to this Office Action and present any arguments against the refusal. Expect a few weeks from the date of submission of your response for the Examining Attorney to review your arguments and determine whether or not you can move forward to publication (See step 5).
Should the Examining Attorney reject your arguments, he or she will issue a Final Office Action and you will have another 60 days to respond with additional arguments against refusal.
Publication is typically the last stretch before registration is issued, where your mark is published for 30 days to give notice to others that your mark will be issued. During this time, third parties are allowed to file an opposition to the registration of your mark if they believe there will be an issue to you having exclusive rights to that mark. Although rare, if this occurs, an opposition proceeding will be conducted to determine whether or not your registration should be issued.
Congratulations, if no one objects in the publication phase you will move on to registration and will be afforded federal trademark protection of your mark. This means that you are the exclusive owner of your trademark. However, the work is far from over, you will need to take steps to maintain that status. For more information about trademark maintenance see: https://www.hebertthomaslaw.com/trademark-maintenance/.
If you are ready to obtain trademark registration and need help, contact Hebert-Thomas Law today to learn about our affordable, flat-fee trademark packages! Let us help you “protect your brand and butter!”™