Archives For September 2015

Clients often ask how long it takes to get a trademark. Unfortunately, there are a bunch of answers to that question and it is hard to pin down. At a minimum, you will likely spend at least six months going through the USPTO trademark application process, but it is not uncommon to spend more than 12 going through various stages.

In this post, we will look at what the process and timeline looks like for applications based on actual use and also applications based on intent to use.

1(a) – Trademark Application Timeline Based on Actual Use

If you are already using your trademark in commerce, then you can file an application based on actual use.

The first step is to draft the application (most likely online using the USPTO’s online application system). Once the application is filed, the USPTO will take three months checking to make sure all of the basic requirements in the application have been filed and they may take other actions like assigning pseudo marks. The USPTO will then assign the application to an examining attorney who might take up to one month to review your application to see if it should be approved.

If the application is denied, the USPTO will send you an Office Action detailing the reasons for the denial and you will have six months to respond to the Office Action. If you don’t respond, the application is abandoned. If you do respond, then the USPTO will have another couple months to review your objections to its denials. If the USPTO decides not to reverse its original decision, then you have the option to enter into a lengthy formal appeals process that can easily take more than a year.

If the USPTO approves the application, or accepts your appeal to an Office Action, then your mark will be published for opposition. Third parties will be given 30 days to object to your application on various grounds. Assuming there are no objections, you will then receive a registration certificate in the mail about two or three months later.

Click here to view the USPTO’s visual timeline.

1(b) – Trademark Application Timeline Based on Intent to Use

If you are not using your mark in commerce but intend to do so within six months, you can file an Intent to Use Application.

Everything in this process and timeline is identical to the above with one exception. If the application is approved then, prior to publishing the mark for opposition, you must file a Statement of Use. In particular, once the USPTO approves the application, you will receive a Notice of Allowance and be given six months (which may be extended) in which to file your Statement of Use. The USPTO can take up to one month to approve or deny the Statement of Use.

Assuming your Statement of Use meets the USPTO’s requirements, your mark will register and you will receive a registration certificate in the mail about two to three months later.

The USPTO’s visual timeline for this process is similar to the chart referenced above and can be viewed here.

What to do After Registration

If you receive a federal trademark registration from the USPTO, you must file additional documents later. We wrote about those requirements in our post, How to Keep Your Trademark Registration Alive.

Need Help?

OK, so this process and all the various forms and requirements can be confusing.

But we’ve made it easy. For one low fee you can get your application filed and we can even help you with appeals and renewal documents when the time comes. Learn more over at!

Image: Adobe/Silkstock
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

We’ve mentioned before on this blog that you can’t protect a descriptive term. In it’s simplest form, that means if you operate a coffee shop called Mighty Coffee Shop, the USPTO might allow you to protect “Mighty” with respect to the sale of coffee, but you couldn’t protect “Coffee Shop” because it is descriptive of the product you sell: coffee.

In this post we will look a bit more at the framework behind descriptive marks and what you can and cannot protect.

In General

The USPTO makes it clear that an examining attorney will “refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” As a result, these phrases shouldn’t even be called a trademark because they are not capable of serving as a source identifier. That is, the consuming public is unlikely to associate the phrase itself with a particular provider of the good or service because the phrase merely describes the good or service. Examples include “Holiday Inn” for a hotel/inn and “Vision Center” for eye and optical services.

Similarly, the USPTO says that “a  mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.”

Secondary Meaning

One exception to the above rule is the doctrine of “secondary meaning.” Under this doctrine, a descriptive term can obtain trademark protection if, after some period of time, consumers begin to recognize your mark as a source identifier. That means that when the public sees that term, they think of your company. That’s fairly hard to achieve.

However, as we described in our post “Can a Fashion Designer Trademark its Apparel?,” it can be done. For example, the famous shoe designer Christian Louboutin obtained protection for his use of bright red soles on the bottom of shoes.

The Supplemental Register

Even though you can’t register a descriptive term on the principal register, you might be able to make use of the supplemental register. Obtaining a registration on the supplemental register simply provides notice to the world that you are using the term in commerce, but it is also an acknowledgement that your mark is weak. We covered this more in this post.

What You Should Do

First, when selecting your business name, don’t use a descriptive term. At a minimum, you should pick a term that is suggestive and, even better, you should pick a name that is arbitrary. Further, you should perform a trademark search to make sure no one else is using your preferred name.

And if you have any questions, feel free to contact us to discuss your ability to protect your name.

Image: Adobe/RTimages
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.