We get this question a lot, and it’s understandable given the current lengthy delays at the U.S. Patent and Trademark Office (USPTO).
Right now, the USPTO estimates current processing wait times for a trademark application to be approximately 14.5 months – and that is assuming there are no issues with the application that need to be corrected or otherwise dealt with.
Part of the reason for the lengthy delays is due to a surge in trademark filings during the pandemic, including a surge in applications by foreign applicants. The USPTO has also seen a large uptick in fraudulent applications, which further take up its time and resources.
Another reason for the lengthy delays is that the trademark application process itself was already a lengthy, multi-step process to begin with. Once the initial application is submitted, it can currently take anywhere from 6-10 months for the USPTO to assign the application to an examining attorney and for the examining attorney to review the application. If the examining attorney determines that the application complies with all applicable rules and raises no objections to registration, then they will approve the mark for publication in the USPTO’s “Official Gazette.” After publication, a party who believes that they may be damaged by the registration of the mark will have 30 days to file a notice of opposition to the registration or file an extension of time to oppose the registration. If the mark is not opposed, then the examining attorney will typically issue a notice of allowance if the application is based on an intent to use the mark in commerce. Once the notice of allowance is issued, then the applicant must file a Statement of Use and obtain approval of same before it can obtain a registration. If the application is based on use in commerce, then the USPTO will typically issue the certificate of registration. Any number of other issues can arise along the way, but this is the general timeline of major application events.
In sum, there are many factors that affect how long it takes to register a trademark, and an applicant can face any number of roadblocks along the way, including but not limited to having specimens rejected, failing to file the application in the correct category of goods and services, failing to provide an accurate description of the goods and services, failing to understand the use-in-commerce requirement for obtaining a federally registered mark, and having to respond to office actions and notices of opposition. Failure to timely respond to an office action or notice of opposition, among other things, can result in abandonment of the mark application.
Legal counsel familiar and experienced with the trademark application process can assist with avoiding many of these roadblocks in the first place, or when and if they do arise, can effectively assist in addressing them. As a result, knowledgeable trademark counsel can often shorten the otherwise long wait time to obtain a federally registered mark by helping avoid unnecessary trouble and expense during the application process.