​A common question we hear from clients is: “Now that I filed my trademark application, when will we receive the registration certificate?”
 
As an initial matter, filing a trademark application does not guarantee that you will obtain federal registration. The application has to go through a process in the USPTO that involves four basic stages: application, examination, publication, and registration. How long each of these stages lasts varies widely based upon several factors. Typically, the shortest amount of time you can expect the process to take is about 12-15 months.

Application (about 6 months)*
 
Trademark applications are filed electronically through the official USPTO website. The government filing fee is also paid on this site. It is important to note that this filing fee will not be refunded, even if you do not obtain a federal trademark registration.

Once your application is submitted, the USPTO will determine whether you have met the minimum filing requirements. If you have, your application will be assigned an application serial number and official filing date. After a period of about 6 months*, the application will then be assigned to a Trademark Examining Attorney.

* The USPTO experienced a significant backlog of filings in 2021 and has been working to reduce the time to assign a Trademark Examining Attorney. The 6-month estimate is accurate as of the post date for this blog. Current wait times are maintained on this dashboard at the USPTO. 

Examination (about 1-12 months)
 
The USPTO employs over 600 Examining Attorneys, who are lawyers with expertise in U.S. trademark law. An Examining Attorney will review the trademark application to determine whether it includes all of the required filing fees and complies with all applicable laws and rules. As part of this review, the Examining Attorney performs a search of pending and registered marks within the USPTO records, to determine whether there are any existing marks that may bar your registration.
 
The Examining Attorney will issue a letter (an “Office Action”) detailing the results of their review. Typical issues raised during examination include conflicting marks identified during the Examining Attorney's search, ineligibility for protection due to descriptiveness or genericness of the mark, issues with the description of goods or services, and issues with the specimens submitted as part of the application. The Office Action will set a 3-month deadline to respond.
 
You must respond to every issue raised in the Office Action in order to keep your application pending. If you do not file any response, your application will be abandoned, and your fees will not be refunded.
 
If you resolve all issues raised by the Examining Attorney, your application will be approved for publication. If your response does not overcome all of the Examining Attorney's objections, the USPTO will issue a final refusal. You can appeal this final refusal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal.
 
Publication (3-4 months)
 
Applications that are approved by the Examining Attorney move to the publication stage. During this stage, the details of the trademark application are published in the USPTO “Official Gazette,” an online, weekly publication on the USPTO website. Publication opens up a 30-day window during which any third party who objects to your registration may file either an opposition to registration or a request for an extension of time to oppose.
 
If no opposition is filed (or if an opposition is unsuccessful), your application will move to the registration stage. The publication stage can take approximately 3-4 months from the time you receive a Notice of Publication to the time you receive official notice of the next status of the application (if no oppositions or extensions to oppose are filed).
 
Registration
 
If your trademark is based on use in commerce, a foreign trademark registration, or an extension of protection of an international registration to the United States, the USPTO will now issue an electronic Certificate of Registration (the USPTO no longer issues paper certificates unless you submit a request for that format and pay an extra fee). Your Certificate of Registration includes specific information about how to maintain your trademark registration.

Factors that can Lengthen the Timeline

• Complexity of any Office Actions and Time Taken to Respond. If the Trademark Examining Attorney raises multiple grounds to refuse your application and/or you are not able to overcome all issues in a first response, the examination stage can take significantly longer. How long you take to respond to any Office Actions also impacts timing.

 

• Appeal. As noted above, you can appeal a final refusal to the TTAB. Appeal would significantly lengthen the time to obtain registration, involves a complex process, and will not be covered in detail in this overview.

 

• Opposition. Trademark oppositions are litigation-type proceedings within the USPTO, and they are held before the TTAB. During an opposition, your trademark application is suspended until a decision is reached on the grounds for opposition.

 

• Your trademark is not yet being used in connection with the sale of goods or services. If you file your trademark application before you have started selling goods/services in connection with the mark, you will need to prove you have started using your mark in commerce before the USPTO will issue a Certificate of Registration. This involves additional submissions (and time) to the general process outlined here.

 
Do you have questions about trademarks?  Feel free to contact us.  We help clients of all sizes, across industries, and based in many countries obtain and maintain their US trademark rights.

Legal Disclaimer: The information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney-client relationship. Although effort has been made to ensure that the answers are correct, Weaver Legal and Consulting LLC and the associated author cannot and do not offer any warranty, whether express or implied, that the answers contained are accurate statements of law. This document is provided for informational purposes only. You should not act upon any information without first seeking advice from a qualified attorney outside the context of this article. 

     Brand owners who are interested in seeking U.S. trademark protection may want to get their applications on file at the United States Patent and Trademark Office (USPTO) before mid-January 2025 to avoid new and/or increased fees.

     In mid-November, the USPTO published a Final Rule that implements significant fee increases for trademark owners in 2025.  The Final Rule sets or adjusts 28 trademark fees and adds 7 new fees.  This blog will discuss the fees as they relate to electronic U.S. trademark application filing only.[1]

     Before diving into the details, a little background and alphabet soup is helpful.  Trademark applicants currently have two filing options via the Trademark Electronic Application System (TEAS):  TEAS Plus and TEAS Standard.  TEAS Plus is the lowest-cost filing option currently provided ($250 per class), but it comes with more stringent initial filing requirements.  Fees for TEAS Standard applications ($350 per class) are higher than those for TEAS Plus because they offer applicants more options during filing, including the option to enter free-form text descriptions of goods and services covered by the trademark.

The New Base Application

     Beginning 18 January 2025, the USPTO will eliminate the current TEAS Plus and TEAS Standard trademark applications and replace them with a single electronic application filing option (a “base application”) that has a filing fee of $350 per class.  In order to qualify for this base application filing fee, however, the application must meet two criteria:  it must meet standards relating to the description of goods/services to be covered, and it must be considered “complete.”  Failure to meet the requirements in these two areas will result in new surcharges created in this Final Rule.

Description of Goods/Services

     To qualify for the base application filing fee of $350 per class, the trademark application must select pre-approved USPTO ID Manual entries for goods and services from a pick-list.  The pick-list is visible once the trademark applicant types in keywords for their goods/services.

     If the trademark owner’s desired goods/services are not listed in the ID Manual, they have a couple of options.  First, they can customize their description of goods/services by entering free-form text in the application.  However, if they do so, the USPTO will assess the following new surcharges per class:

• To enter free-form text descriptions of goods/services, applicants will pay a surcharge of $200 per class
• If any free-form text description of goods/services exceeds 1,000 characters, applicant will pay a surcharge of $200 per class for each additional group of 1,000 characters (spaces and punctuation count against this number!)

     The second option available to trademark owners is to submit a formal request to add a new goods/services description to the ID Manual.  The USPTO implies that this process will take a couple of weeks; however, applicants should assume the process may take longer, and there is no guarantee the Office will adopt a new entry.

Complete Application

     Another new surcharge of $100 per class can be applied to new applications starting in January if the USPTO determines that the application is filed with insufficient information.  Generally speaking, the requirements for a base application are the same as the current requirements for a TEAS Plus application.  Some requirements to note here that may trigger a surcharge for filing with insufficient information include[2]: 

• A verified statement dated and signed by a person properly authorized to sign on behalf of the owner;
• For marks that include color, a statement naming the colors and describing where the colors appear in the mark, and a claim that the colors are a feature of the mark;
• For marks that are not in standard characters, a description of the mark;
• An English translation of any non-English wording;
• A transliteration of any non-Latin characters included in the mark;
• For marks that include an individual’s name or likeness, either a statement that identifies that individual and comprises written consent of the individual, or a statement that the name or likeness does not identify a living individual;
• If applicant owns one or more registrations for the same mark, and the owners last listed in Office records of the prior registrations for the same mark differs from the owners listed in the application, a claim of ownership to the registrations identified by the registration numbers.

     It should be noted that all of these fees are assessed per class; as a result, fees and surcharges may increase substantially in multi-class applications. 

     There is some ambiguity around how the USPTO will apply the surcharges.  According to the USPTO, the electronic application system will clearly indicate the fields required to avoid the incomplete information surcharge, and there will be no surcharge for IDs selected from the ID Manual within the application.  During the drafting process (and before hitting the “submit” button), the applicant should see a final calculation of all surcharges assessed, along with information required to avoid them.

Implications for Brand Owners

     Given the above surcharge structure, it will be imperative that trademark owners carefully discuss their application with their attorney prior to filing.  In line with trademark offices around the world, the USPTO is clearly encouraging applicants to adopt their pre-approved goods/services descriptions from the ID Manual.  However, for industries where this may not be feasible (for example, emerging or rapidly changing technologies), brand owners may opt for the additional surcharge to preserve their trademark rights.  For trademark owners based outside of the United States, these surcharges will require upfront strategy to minimize the added cost.

     Do you have questions about trademarks?  Feel free to contact us.  We help clients of all sizes, across industries, and based in many countries obtain and maintain their U.S. trademark rights.

​     Legal Disclaimer:  The information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney-client relationship.  Although effort has been made to ensure that the answers are correct, Weaver Legal and Consulting LLC and the associated author(s) cannot and do not offer any warranty, whether express or implied, that the answers contained are accurate statements of law.  This document is provided for informational purposes only.  You should not act upon any information without first seeking advice from a qualified attorney outside the context of this article. 


[1] Fees relating to paper filing options, international registration applications (under the Madrid System), registration renewals, and Letter of Protest filings are not addressed here.

[2] This list is not comprehensive.  A full listing can be found in the Final Rule noted above.