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Trademark Timeline - How the Trademark Process Works

Trademark Timeline - Steps to Obtaining and Maintaining a U.S. Trademark

Trademark Introduction
 
Trademarks protect your brand name, logo, or other identifier for your goods or services.  (Technically, if it's protecting services it's called a "service mark" but people usually just call them all "trademarks".)  You are also invited to look at a list of trademarks obtained by this law firm, to see examples.  By registering a trademark, the U.S. (or foreign) government is giving you a right to stop others from selling a product which would confuse consumers as to where the product came from.
 
The trademark process has the following steps (and time from filing):
1) Search / Due Diligence & Filing  (0 months)
2) Internal Review: Examination by the U.S. Trademark Office  (4 months)
3) External Review: Third Party Opposition (rare; 6 months)
4) Use of the Trademark (at time of filing or 6 - 12 months)
5) Trademark Issuance (9 - 12 months)
6) Renewal of the Trademark (before 6th year, before every 10th year)
 
Now for the details and qualifications to this timeline -

 

 

0 months - Filing Your Trademark

 
First, a search is conducted.  For information on Trademark Searches, view the previous page by clicking here.

 

After conducting a search and ensuring that your trademark has a reasonable chance of being obtained (after all, who wants to put lots of money into marketing, branding, and producing your products if you can't use a name), it is filed at the U.S. Patent and Trademark Office (the "U.S.P.T.O." or "USPTO).

 

 

4 months - Trademark Examination - "Internal Review"

 
About four months from the date of filing, an Examining Attorney at the trademark office examines your trademark application and reports on his findings in an Office Action, or sometimes, by having a conversation with the Attorney of Record.

 

In many cases, your trademark is allowed at this point or allowed with a minor change or edit.  In some cases, a trademark may be rejected outright.  The most common rejections are a) the trademark is descriptive and is only allowable on the Supplemental Register, and b) It is likely to cause confusion in the marketplace with another trademark.  If a Response is necessary, we have up to six months to provide such a Response which is usually on paper, but sometimes a telephone discussion with the Examining Attorney helps.

 

 

 

6 months - Publication - "External Review"

 
Assuming your trademark application hasn't been delayed by a rejection or taking time to file a response and is proceeding on the Primary Trademark Register, then your mark will be published for opposition at about the 6 month mark.
 
The trademark office typically takes a few weeks or more from the time an Examining Attorney approves your trademark until it gets published in the Official Gazette, but once published, an opposer has 30 days to speak up.  He can extend the time to oppose up to a total of 90 days, which usually gives enough time for negotiations.  An Opposition is rare, but it can happen.  Filing a formal complaint with the Trademark Trials and Appeals Board is even rarer, but again, it can happen.

 

 

 

9 months - Notice of Allowance

 
If all goes well, and absent occurrences spoken about above which may add time to the application process for your trademark, a formal Notice of Allowance will be received from the Patent Office.  If haven't yet filed a Statement of Use, we'll need to file this now as well.  A Statement of Use is a picture of your product with your trademark thereon (no advertising materials). If your mark is a service mark, tangential goods which relate to your services (such as advertising materials) must be submitted.

 

 

10 months - Trademark Registration Obtained

 
It takes a few weeks from the time of Allowance until the final Trademark Certificate arrives.  This is especially true if we only filed a Statement of Use after issuance (see 9 months).  Now you can get the broadest scope of damages for trademark infringement when you go out and sue someone.

 

You'd think the fun would end here, and it would if this were a Design Patent, but with a trademark, there is a 'use it or lose it' policy.  So, we have to keep telling the government that we're using the trademark.

 

 

60-72 months from issuance- Maintain Your Trademark

 
The timeline switches track a bit here.  For convenience, the timeline is now listing months from issuance and not months from filing.  The issue date becomes key in calculating all future dates in U.S. trademark practice.  Once your mark is in use for at least five years, it's said to have obtained secondary meaning.  That is, your trademark has now taken on a "definition" of it's own.  Brand awareness and the fact that you've sold your product for five years is enough, according to the law, that people unquestionably know that your trademark refers to your product or services.  So the government grants it "inconestable" status.  (Okay, it's actually contestable, but for fewer reasons and it's much harder to contest.)

 

So, between 5 and 6 years from issuance we file two affidavits: a) an affidavit of continued use and b) an affidavit of incontestability.  Your Patent and Trademark Attorney typically keeps track of the time and notifies you when the affidavits must be filed.

 

 

108-120 months from issuance - Maintain Your Trademark

 
By the 10th year of issuance, and every 10 years thereafter, you must file continued affidavits of use.  Thus, at 10 years, 20 years, 30 years, and ... you get the idea, further affidavits must be filed or your trademark registration goes abandoned.

 

For more information, take a look at our other trademark pages or get in contact with a patent and trademark attorney at this firm.