What Happens After You File a Trademark Application with the United States Patent and Trademark Office (USPTO)?

​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.