If you’re considering registering a trademark, you may be disappointed to learn that trademark registration doesn’t happen instantly. It takes a minimum of several months to register a trademark, but it can take years.
Steps to Speed the Process
Although trademark registration is never quick, there are steps you can take when you apply for a trademark that will increase the chance that you’re getting a trademark in months, not years. It’s all a matter of doing thorough research, taking the time to prepare a strong and complete application, and responding promptly to any concerns.
The two most common reasons that trademark registrations are delayed are:
- Trademark Office Actions. About three months after your trademark filing, an examining attorney at the U.S. Patent and Trademark Office (USPTO) will review it. If there are issues with the application, you’ll receive a letter from the U.S. Trademark Office called an “office action” that explains the problems and gives you a chance to resolve them. If you don’t resolve all the issues in your initial Office action, you’ll receive a final Office action.
- Objections. Once your trademark registration is accepted, notice of the registration will be published in the Official Gazette. There’s a 30-day period in which anyone can file an objection to your registration. Objections take additional time to resolve.
Office actions and objections may sound like they’re beyond your control, but careful planning can reduce their likelihood, and prompt responses can minimize further delays. Here’s a step-by-step guide for how to get a trademark registered as quickly as possible.
Step 1: Choose a Strong Mark
Not every name, symbol, or sound is eligible for trademark protection. If you choose a weak mark, you’ll likely receive an Office action, and your registration will be delayed or denied.
In general, the more distinctive your mark is, the easier it is to trademark. For example, if you want to trademark a business name, you can get trademark protection for a made-up name (like “Microsoft”), an existing word that’s usually not associated with your product or service (like “Apple” computers), or a name that suggests something about your product or service without actually naming it (like “Greyhound” buses).
Weak marks lead to Office actions and denials. They include names that are descriptive (“Tangy Barbecue Sauce”) and location names (“New England Chowder”). Generic names like “Frozen Yogurt” can’t ever be trademarked.
A trademark attorney can help you assess the strength of your trademark.
Step 2: Choose a Mark That Isn’t Confusingly Similar to Another Mark
Another common reason for office actions is a likelihood of confusion between your mark and another mark that’s already been registered.
Likelihood of confusion is also the most common reason that third parties might oppose your trademark registration.
A likelihood of confusion exists if two marks are similar and are used to identify similar goods or services.
You can search for similar trademarks in the USPTO’s online database, but a thorough search should also include state trademark databases, business directories, and ordinary internet searches.
Although you can conduct trademark searches yourself, it can be hard to objectively evaluate whether there’s a likelihood of confusion between your mark and someone else’s. You should consider hiring a trademark lawyer to help you with this important step.
Step 3: Begin Using Your Mark in Commerce As Soon as Possible
When you file your application, you’ll have to choose a filing basis: “use in commerce” or “intent to use.” If you are currently using your mark, you can file under the use in commerce basis, and you’ll have one less step to complete before your mark is registered.
If you are not yet using your mark, you’ll have to file under “intent to use.” At the end of the registration process, you’ll receive a Notice of Allowance, but your mark will not be officially registered until you file a Statement of Use and submit a specimen of your mark.
You’ll have six months to file a Statement of Use, but that time period can be extended.
Step 4: Submit a Complete and Accurate Trademark Application
You may also receive an office action if there’s a technical or procedural problem with your application. For example, you may have improperly identified the goods or services associated with your mark, or you may not have submitted an acceptable specimen of your mark. While these sorts of problems are relatively easy to remedy, they do slow down the process.
Take your time and make sure you have fully completed the application, have chosen the correct type of goods or services, and have followed all instructions for submitting a picture and specimen of your mark.
Step 5: If You Receive an Office Action, Respond Promptly and Thoroughly
If the USPTO sends you an Office action, your trademark application won’t move any further until you respond. You’ll usually have six months to submit your response, but if you want your application to move quickly, you should respond as soon as you can.
At the same time, don’t be hasty. Some Office actions raise issues that require complicated legal arguments. It is important for your response to address each of the issues in the Office action fully. Otherwise, you will likely receive a final office action that gives you far more limited avenues for responding. You may want to hire a trademark lawyer to help you with your response.
The trademark registration process can be frustratingly slow, but if you choose a strong mark, do your research and submit a strong application, you’ll greatly reduce the chance of Office actions and oppositions. If you run into delays, a quick and thorough response may put you back on the road to a fast trademark registration.