Trademark Timeline: Why You Should File Early

Registering a trademark is not a quick or easy process. It involves several steps and stages, and it currently tends to take at least a year, if not years, to complete. In this blog post, we will explain the timeline of trademark registration and why you should file your application as soon as possible, even if it will take a long time to get approved.

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If you have a brand name or logo that you want to protect from unauthorized use by others, you may want to register it as a trademark with the United States Patent and Trademark Office (USPTO). A trademark is a sign that identifies and distinguishes the source of goods or services in the marketplace. By registering your trademark, you can obtain exclusive rights to use it nationwide and prevent others from using confusingly similar marks for related goods or services.

However, registering a trademark is not a quick or easy process. It involves several steps and stages, and it currently tends to take at least a year, if not years, to complete. In this blog post, we will explain the timeline of trademark registration and why you should file your application as soon as possible, even if it will take a long time to get approved.

The Timeline of Trademark Registration

The timeline of trademark registration can vary depending on many factors, such as the complexity of your mark, the availability of similar marks, the number of classes of goods or services you apply for, the quality of your application, and the workload of the USPTO. However, here is a general overview of the main steps and stages involved in the process and how long they typically take:

Step 1: Conducting a trademark search

Before you file your application, you should conduct a comprehensive trademark search to make sure that your mark is not already registered or pending by someone else for similar goods or services. You can use the USPTO’s Trademark Electronic Search System (TESS) to search for existing federal trademarks, as well as other online databases and sources to search for state trademarks, common law trademarks, domain names, and business names. A thorough trademark search can help you avoid potential conflicts and rejections later on. This step can take anywhere from a few hours to a few days or weeks, depending on how extensive your search is.

Step 2: Filing your application

Once you have cleared your mark, you can file your application online using the USPTO’s Trademark Electronic Application System (TEAS). You will need to provide information such as your name and address, a description and drawing of your mark, a list of goods or services that you are using or intend to use your mark with, and a filing fee for each class of goods or services. You will also need to specify whether you are filing based on actual use in commerce or intent to use in commerce. If you are filing based on actual use, you will need to provide evidence of such use, such as specimens and dates of first use. If you are filing based on intent to use, you will need to file a statement of use later on when you start using your mark in commerce.

Step 3: Receiving an application serial number

After you submit your application, you will receive an email confirmation with an application serial number. This number is important because it allows you to check the status of your application online using the USPTO’s Trademark Status and Document Retrieval (TSDR) system. You should keep this number handy and monitor your application regularly throughout the process.

Step 4: Waiting for an examining attorney

Your application will be assigned to an examining attorney at the USPTO who will review it for compliance with the trademark rules and regulations. The examining attorney will also conduct a search for conflicting marks and determine whether your mark is eligible for registration. This is currently taking about nine or more months from the date of filing.

Step 5: Receiving an office action or approval for publication

If the examining attorney finds any issues with your application, he or she will issue an office action that explains the reasons for refusal or requirement. You will have three months from the date of the office action to respond and address the issues raised by the examining attorney. If you fail to respond timely or adequately, your application will be abandoned. If the examining attorney does not find any issues with your application, he or she will approve your mark for publication. This step usually takes about one month from the date of examination.

Step 6: Publishing your mark for opposition

If your mark is approved for publication, it will be published in the USPTO’s Official Gazette (OG), which is a weekly online publication that lists all marks that are pending registration. The publication serves as a notice to the public that anyone who believes that they would be damaged by the registration of your mark has 30 days from the date of publication to file an opposition with the Trademark Trial and Appeal Board (TTAB), which is an administrative tribunal within the USPTO that handles disputes over trademarks. If no opposition is filed within this period, or if any opposition is resolved in your favor, your mark will proceed to registration. It usually takes about two months from the date of approval for your mark to be published.

Step 7: Registering your mark or filing a statement of use

If you filed your application based on actual use in commerce, and your mark is not opposed or the opposition is resolved in your favor, you will receive a certificate of registration that confirms your ownership and exclusive rights to use your mark nationwide. If you filed your application based on intent to use in commerce, and your mark is not opposed or the opposition is resolved in your favor, you will receive a notice of allowance that gives you six months to file a statement of use that shows that you have started using your mark in commerce. You can request up to five six-month extensions of time to file the statement of use, for a total of three years from the date of the notice of allowance. If you fail to file the statement of use or request an extension within this period, your application will be abandoned. If you file the statement of use and it is accepted by the examining attorney, you will receive a certificate of registration. This step usually takes another two months from the date of publication or the date of filing the statement of use.

Why You Should File Early

As you can see, registering a trademark can take a long time, from a year to even longer, depending on various factors. However, this should not discourage you from filing your application as soon as possible, even if it will take a long time to get approved. Here are some reasons why you should file early:

You can secure your priority date

By filing your application early, you can secure your priority date, which is the date when you establish your rights to your mark. Your priority date is either the date when you first used your mark in commerce or the date when you filed your application, whichever is earlier. Your priority date is important because it determines who has superior rights to a mark in case of a conflict with another user or applicant. The earlier your priority date is, the stronger your position is.

You can start using the ® symbol once your mark is fully registered

By filing your application early, you can start using the ® symbol next to your mark as soon as it is registered. The ® symbol indicates that your mark is federally registered and that you have exclusive rights to use it nationwide. Using the ® symbol can enhance your brand image and reputation, as well as deter potential infringers from using similar marks.

You can benefit from constructive notice

By filing your application early, you can benefit from constructive notice, which means that once your mark is registered, everyone is deemed to have notice of your ownership and rights to your mark, even if they are not actually aware of it. Constructive notice can prevent others from claiming innocent or good faith use of a similar mark as a defense in an infringement action.

You can claim damages from the date of filing

By filing your application early, you can claim damages from the date of filing, not from the date of registration, if someone infringes on your mark. This means that you can recover profits, damages, and costs from any infringer who used a similar mark after you filed your application but before you registered it.

Conclusion

Registering a trademark is a long and complex process that requires careful planning and research. However, it is worth the effort and investment because it can provide valuable protection and benefits for your brand and business. By filing your application early, you can secure your priority date, start using the ® symbol, benefit from constructive notice, and claim damages from the date of filing. Therefore, we recommend that you file your application as soon as possible, even if it will take a long time to get approved. Contact us today to learn more and to see how we can help you.