How Long Does It Take To Register a Trademark and When Can You Begin to Use Your Trademark?
We are often asked by our customers how long does it take to get a trademark registration and, correspondingly, when can I begin use of my trademark? These two questions are often at the at the very heart of beginning a new business or launching a new product line. In response, here is what you need to know about beginning use of your trademark and how long it takes to register the trademark with the U.S. Patent and Trademark Office.
When Can You Begin Use of Your Trademark?
The good news is that you may begin use your trademark at any time once you decide to start marketing and/or selling your goods or services under the trademark. There is nothing that requires you to register your trademark with the U.S. Patent and Trademark Office prior to beginning use thereof.
One major note of caution, however, just because you can begin use of your trademark does not mean that you should. Prior to beginning use of your trademark Trademark Research should always be performed to make sure that your trademark is cleared for use and, if adopted, would not be likely to cause confusion with another trademark already in use by another.
A Trademark Research report will identify any and all trademarks which are already in existence so that you may be informed whether or not use of your proposed trademark is cleared (i.e., is not likely to infringe upon another’s trademark already in use) or not.
Additionally, should another entity ever bring an infringement action against you proof that you “cleared” use of your mark through a research report may be used as evidence of your reasonableness in selecting and beginning use of your trademark.
Benefits of Federal Registration
So if a federal registration is not required, why would you ever register your trademarks? Here’s why. For relatively little cost a federal registration avails your trademarks to certain benefits under the Trademark Act of 1946 which are not available to unregistered marks. The benefits include:
*Constructive notice nationwide of your claim of ownership of a trademark;
*Evidence of ownership of the trademark;
*Jurisdiction of federal courts to Enforce a Trademark may be invoked;
*Registration can be used as a basis for obtaining Registration in Foreign Countries;
*Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
How Long Does it Take to Register My Trademark with the U.S. Patent and Trademark Office?
If you file a use-based application (i.e., you are using the mark at the time you file your Trademark Application) you may receive your Trademark Registration, if there are no refusals or other issues with your application, in 8 – 9 months from the date the trademark application is filed. If there are issues which need to be addressed this process may be slowed. Here’s why:
Approximately three to five months after the application is filed the mark is assigned to one of roughly 350 trademark examining attorneys who work for the U.S. Patent and Trademark Office.
The trademark examining attorney reviews the application and determines whether mark is entitled to registration.
If he or she determines that there are no issues which need to be addressed and that the mark is entitled to registration the examining attorney approves the mark for publication (See Below).
However, if any Procedural Issues (e.g., clarification of the applicant’s name or entity type) or Substantive Refusals need to be addressed the examining attorney will issue what is known as an Office Action.
An applicant is given six months to respond to an office action or the mark will be Abandoned.
If an acceptable response to an Office Action is filed the examining attorney will approve the mark for publication.
If a response to an Office Action is not accepted a Final Office Action will be issued.
Once a Final Office Action is issued we have six months to either file a Request to Reconsider the Final Office Action, let the mark abandon, or file an Appeal of a Refusal to the Trademark Trial and Appeal Board (“Board”).
If Board decides in our favor the examining attorney’s refusal will be removed and the mark approved for publication for opposition. If the refusal is upheld by the Board, we may file a federal district court action to appeal the Board’s decision although this is rarely done.
Approximately Four to Six weeks after being approved for publication, the application is actually published for opposition.
The mark is published in a book of all published marks before the U.S. Patent and Trademark Office known as the Official Gazette.
Marks are published for opposition for 30 days. During this opposition period any party wishing to object to the registration of the mark may do so by filing a Notice of Opposition.
Although very rare, if filed our experienced professionals are ready to assist you in responding to and moving your mark passed an opposition proceeding and towards registration.
Provided that no Notice of Opposition is filed against your mark, approximately Four to Six weeks after the opposition period ends, your mark receives its Certificate of Registration if it was a Use-Based Application of Notice of Allowance if it was an Intent-to-Use Application.
When a Notice of Allowance is received all that is required to complete the registration of the mark is the filing of a Statement of Use. Once filed, an Intent-to-Use Application will receive its Certificate of Registration.
When Can I Use the “TM” and “®” Symbols?
Finally, we are also always asked when can I use the “TM” and “®” symbols in connection with my mark.
In regard to the “TM” symbol, you may use this designation at any time to designate that you claim trademark rights in the mark at issue. However, the “®” is only permitted to be used once your mark is registered.
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