Timeline of a Trademark Application

At Collins Gann McCloskey & Barry (“Supplement Counsel”), we know that starting a dietary supplement or natural products business can be scary. There are a lot of unknowns. Our firm works with businesses as they grow and build, and we want to do all that we can to take out some of those unknowns and help guide supplement companies through all stages of launching and growing a business – which can include navigating through the process of securing trademarks for your sports nutrition, natural products or dietary supplement’s company name, logo and product names.

Filing a trademark registration can be an extremely lengthy process – and can be made longer if you decide to try and go it alone the first time around. But, even if you do the smart thing and hire a law firm, the USPTO has an examination process that lasts much longer than people understand. This leaves a lot of people wondering what is actually going on after they submit their application.

We thought it would be a great idea to share a trademark application timeline with you so you can be prepared for what is to come throughout the application process.

Where to start…

1. First, we need to do a search and analysis

The truth is, this is one of the most important parts of the entire trademark application process. You have to do a very comprehensive search for any and all registered, almost registered, and common law trademarks currently being used to determine if your application will get approved and make it past the opposition period. If you don’t have a complete picture of what marks are in use, you may face a likelihood of confusion office action, or worse, a time-consuming opposition filed by a priority mark holder. The timeline for this will vary based on who you work with. I handle most of the day-to-day trademark issues at Collins Gann McCloskey & Barry working with our trademark paralegal Ellie Sladic. For us, it is usually a 7-day process from the time we order the report, to the time it is reviewed and sent off to the client with my opinion. After my opinion on the “safety” of the desired mark is sent, it is up to the client to decide if they want to move forward with the application. If it’s a yes then we move on.

2. We get the application ready

Again, this process will vary based on who you’re working with. For our firm, there is a short intake form that we have all of our clients fill out electronically. Once we get that back we can get started on the application. There will be some communication back and forth to nail down the proper class of goods and services the client needs, along with obtaining the exact right specimen, but overall, we try to get this portion done as efficiently as possible. We will not allow the process to take more than 3 weeks. If you’re slow to answer us for things we need for the application, the USPTO will get to you slowly, too. We do our best to push things along. Overall expect anywhere from 1 to 3 weeks spent on filling in the application and getting it submitted.

3. And now we wait…

Once the application is submitted to the USPTO, there is a 3 month waiting period before it is assigned to an examining attorney. When I say 3 months, that’s not a hard and fast rule. The USPTO tries to adhere to it but sometimes it can take longer. There are mechanisms to try and speed this up, but it will cost you. However, if it is important to your brand be sure to discuss those options with your attorney. Once that 3 months is over then the examining attorney will review the file. This might take another 1 or 2 months, it all depends on how busy they are.

4. The trademark application is reviewed

As I said, the examiner may take 1 or 2 months to review the application. After their review, there are two options. One, they say everything looks good and they send you on to publication (explained below). Or two, you receive what is called an office action (I will provide more information on office actions in a future article). Office actions are handed out very regularly and they will vary in severity. They will always slow the timeline down because the examiner must review your answer to this office action and determine the outcome of your application based on that answer. If it is a substantive action it could take a few months for your attorney to get the answer together before even answering. But, you have 6 months to answer any office action you receive. Expect this point to take anywhere from 1 to 4 months before you hear anything from the examiner.

5. Everything is approved and we get moved to publication

This is great! If there are no office actions, or the answer to the office action is accepted, then you are moved to publication. This is when the USPTO publishes your mark and gives anyone who may feel your mark is infringing on theirs or is too close to theirs, the chance to oppose you. They have 30 days to file their opposition. I won’t discuss oppositions here today because that could be an entire series of articles, but hopefully, you have done the proper research, and this won’t happen to you.

6. You’re officially official!

Congratulations! You made it through the 30 day opposition period and you are officially registered on the principal register with the USPTO. You now have all of the rights and protections you need to conquer the world under your chosen trademark.

As you can see, the total timeline can vary greatly depending on what happens. If you filed a 1b application and not a 1a application, add an additional 6 months after number 6 in which you have to file a statement of use or risk losing your mark. Overall, I have seen the process take 6 months and almost 2 years. But, there are ways to predict how long it may take at any given point, and if you’re working with an attorney they will keep you apprised of all that is happening, so have no fear. And as a side note, these aren’t all the possibilities but rather a general best-case scenario timeline to fill you in on the process of getting a trademark application submitted and approved.

As always, if you have questions or are ready to move forward with your trademark application, Alan Feldstein, Esq., paralegal Ellie Sladic and I are here to help. Just send an email to [email protected]. We do our best to make the process as swift and painless as possible!

Please note this article is for information only and not to be construed as legal advice; it does not create an attorney-client relationship. [© Shannon Montgomery, Supplement Counsel, 2020.  All rights reserved.]