A trademark is a source identifier – it may be a word, logo, slogan, sound and/or design that when attached to a good or service, allows a consumer to discern the source-company, which produces the good/service.
IMMEDIATE, COMMON LAW TRADEMARK RIGHTS
Perhaps one of the most important and yet commonly forgotten principles in trademark law is that a user obtains a certain amount of trademark rights, known as Common Law Trademark Rights, once the mark is used in commerce. Indeed, simply by tethering the trademark to the sale of a good/service and earning sales, one immediately, obtains a preliminary level of protection in a geographically constrained area. So, if one were to open a toy store in Brooklyn, NY and call it Dino Toys, this individual would obtain Common Law Trademark Rights to the use of “Dino Toys” in conjunction with the sale of toys in Brooklyn (and arguably all of New York City), even though this individual never registered the Trademark
HOW LONG DOES IT TAKE TO GET A TRADEMARK REGISTED IN THE USPTO?
Unfortunately, the answer to this question is the ever frustrating, It Depends. Still, while it is impossible to predict the exact number of days or even months it will take to get a trademark registered in the USPTO, a fair estimate is somewhere around 9-12 months (although the process can certainly be longer or shorter). Fundamentally, there is such a great deal of variation in the time a trademark application may take to achieve full registration because the timing is a function of how busy the USPTO is and the speed with which an applicant can respond to issues presented by the USPTO and/or trademark opposers.
From the date of submission of the trademark application, the applicant can reasonably expect to receive a notice of either a preliminary acceptance or rejection from the USPTO within 3-6 months. During this initial review period, the Examining Attorney assigned to the trademark application will consider the two fundamental questions of:
- Is the trademark sufficiently distinct vis-à-vis the goods/services listed in the application to warrant trademark protection and;
- Are there any existing trademarks applied for and/or registered in the USPTO that given their listed goods/services, may cause a likelihood of confusion with the newly applied for trademark. Depending on whether or not the trademark was found to be an eligible trademark for registration or ineligible for registration, the process will take an additional number of months.
If the examining attorney does not find any problems in need of cure with the trademark application, the USPTO will approve the application for publication on the Official Gazette. The Official Gazette is simply a weekly publication that lists pending trademarks and allows an aggrieved party to protest the admission of a new trademark. The idea here is that without the Official Gazette, the public would not have an opportunity to protest a mark that does not deserve publication. Thus, publishing the prospective mark to the Official Gazette allows an effected 3rd party to come forward and file a trademark opposition if he/she believes that the publication of the new mark would somehow infringe the opposer’s rights.
The trademark will typically be published to the Official Gazette around a month after notifying the applicant that the trademark will indeed be published to the Official Gazette and will remain on the Official Gazette for 30 days. If no one opposes the trademark, the USPTO will typically issue the registration certificate about 3 months after publication.
What happens if the trademark is initially rejected?
If the examining attorney determines that the mark is not sufficiently distinct and/or may conflict with an existing trademark application, the attorney will send out a substantive office action detailing the relevant issue/s. From here, the applicant will have 6 months to provide a response to the USPTO and explain why the issues raised by the examining attorney are not in fact valid. Similarly, if the examining attorney finds an administrative problem with the application (the TM application listed the owner as a corporation despite the fact that the company was registered as an LLC etc.), the examining attorney will issue a Procedural Office Action. Again, the applicant will have 6 months to respond to the Office Action and rectify the issue.
If the applicant responds to the Office Action/s and sufficiently cures the issues presented by the examining attorney, the USPTO will approve the trademark for publication on the Official Gazette and the same time line discussed above is implemented.
HOW LONG DOES IT TAKE TO GET A TRADEMARK? PROTECTION (MAY) STARTS FROM DAY 1
The total time for an application to be processed, from beginning to end, should hopefully not take more than a year. However, it is critical to file the trademark application as soon as possible so as to obtain the earliest possible filing date. Indeed, trademark rights are retroactive to the date of the filing – not the date of registration. File your trademark as soon as possible!
YOUR TRADEMARK HAS BEEN APPROVED: NOW WHAT?
The USPTO is a firm believer in the, “If you don’t use it, you lose it” philosophy when it comes to trademark applications. Thus, while your trademark can in theory last for eternity, it can also retire early if the appropriate steps are not taken. Specifically, an applicant’s trademark is only valid for as long as it is in use with the goods/services listed in the trademark application. After the first 5 years of the trademark’s registration, but before the beginning of the 6th year, the trademark holder must “renew” the mark. This is again true during the 9th year of the trademark’s registration and again, every 10th year that follows.
Similarly, a trademark holder is responsible for ensuring that no unauthorized party uses the mark. If unauthorized parties do use the mark, it risks becoming generic and subject to cancelation.