It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.
When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.
Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.
But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.
The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.