by Kelley Keller
Federal trademark registration with the U.S. Patent and Trademark Office (USPTO) is not a quick process. As the Trademark Timeline at the end of this article shows, it can take anywhere from seven months to more than two years to register your trademark! However, every day you wait to submit your trademark application is another day that your valuable intellectual property, your business, and your profits are at risk.
To protect your business, apply for trademark registration as soon as possible, but be prepared for it to take some time.
Top 3 Trademark Registration Delays
There are three things that are the most common culprits of trademark registration delays, and you can avoid all of them with a bit of time and money.
The top three trademark registration delays are:
1. Office Actions
If the trademark Examiner at the USPTO finds issues with your trademark application, he or she will send you an Office Action. You’re required to satisfy the Office Action or your trademark application will not move along to the next step in the Trademark Timeline. By avoiding Office Actions, the time to register your trademark should decrease.
You get six months to respond to an Office Action. The quicker you answer, the shorter the delay to your trademark registration will be.
Once the Examiner approves your mark for publication in the Official Gazette, third parties are given an opportunity to oppose it. If your mark and application were developed in a way that leaves little opportunity for opposition, you shouldn’t experience delays beyond the standard 30-day opposition period.
While it might seem like you have little control over the common trademark registration delays, you actually have a great deal of control. That’s because the likelihood of speedy registration depends on the strength of your trademark application, which you are responsible for preparing.
5 Ways to Avoid the Top 3 Trademark Registration Delays
To speed up the trademark registration process, follow these five tips:
1. Conduct a Comprehensive Search with a Legal Opinion
All trademark searches are not created equal. You need to conduct a comprehensive trademark search that includes active and inactive records in the USPTO database, common law searches, business database searches, and more (learn the difference between different types of trademark searches here). An intellectual property attorney (not a general business attorney) can review the search results and determine if there is any likelihood of confusion between your mark and another that could cause your application to be delayed or denied.
2. Apply to Register a Strong Mark
A strong mark is one that is distinctive, which means it does not describe the products or services it represents. Make sure your mark is strong or you will undoubtedly experience delays during the trademark process. Use the The Spectrum of Trademark Distinctiveness Infographic to learn the difference between strong and weak marks.
3. Submit a Rock Solid Application
The contents of your trademark application can cause significant delays throughout the trademark process. Get help from an intellectual property attorney to ensure your application is prepared in the best way possible to avoid Office Actions!
4. Respond to Office Actions Quickly and Thoroughly
If you do receive an Office Action, don’t wait the allowed six months to respond. Instead, respond quickly and thoroughly to ensure you’re satisfying the Examiner’s concerns. If you need it, get help from an intellectual property attorney so you avoid getting a second Office Action, which will delay the process even more.
5. Use Your Mark in Interstate Commerce
If you file a trademark application for a mark you haven’t used in interstate commerce yet, you’ll need to file an intent-to-use application rather than a use in commerce application. If you have to file an intent-to-use application, you’ll still have to file a specimen of use in the future (see Step 8 in the Trademark Timeline below for details). That means it will take longer to get your trademark registration than it would if you had used your mark in interstate commerce prior to submitting your application.
The Trademark Timeline infographic below provides more details about the trademark application and registration process, including timing. Use it to track the progress of your trademark from application to registration with the USPTO.
Kelley Keller, Esq. is President of The Keller Law Firm and a 20-year veteran of the intellectual property law field. As an intellectual property attorney, she has deep experience helping businesses of all sizes identify, manage, and protect their trademarks, copyrights, patents, and trade secrets, including many household brands like Toyota, Disney, and Verizon, which she worked with during her tenure at two of the largest IP law firms in Washington, D.C. Kelley also offers education to small business owners, creative and coaching professionals, digital entrepreneurs, and established companies about starting, building, and growing a Rock Solid Business on an strong foundation through her website KelleyKeller.com.
Kelley’s personable nature and ability to explain complex legal issues in simple terms set her apart from most attorneys. She is relentless in helping businesses, their owners, and their families mitigate risks and open the doors to new opportunities.