This trademark timeline illustrates a typical trademark registration-cycle from the creation of the trademark to its registration with the US Patent and Trademark Office (USPTO). While this is a typical timeline for illustrative purposes, for various reasons your trademark application cycle might vary substantially.
Contemplating A New Company Name
When you first think of a trademark, slogan, brand name, company name, or other potential trademark that you feel might become valuable, you should write it down on a piece of paper. The first day that you use your mark with these symbols is your “date of first use” of the mark anywhere. Remember this date, as you will need to indicate it on your trademark application should you ever file one. It is perfectly legal to use the “TM” or “SM” symbols with your new mark, since using these symbols is merely a way of expressing that you intend to seek trademark protection for the mark. Do not use the “Circle-R” Ar symbol, since this symbol is reserved for registered trademarks only.
At this point you do not know whether or not you have the right to use this mark, since you haven’t completed a trademark search of other people’s trademarks and you haven’t completed the trademark registration process. You should do a preliminary market check of your competitors and people who sell related products to see if this name is already being used. This is not a thorough search, by any means, but the more you can do on your own the more money you may save later. Maintain examples and samples of your mark in use on a regular basis for archival purposes.
Preliminary Trademark Search
If you have decided to pursue trademark protection for your mark, you should first determine your odds of being able to keep it. It won’t serve you to spend a lot of money promoting a trademark that you could lose. Your best guarantee is to get your trademark registered with the U.S. Patent & Trademark Office. Federal registration of a mark requires that you be in interstate commerce with the mark, so federal trademark protection may not apply to your situation (most states have a state trademark provision for trademark protection state-wide in cases where the trademark is not used across state lines, such as with strictly local businesses).
There are two primary hurdles that you have to jump to get your trademark application through the trademark office.
First, the trademark examiner who is assigned to your application conducts a search of existing trademarks for “confusingly similar” marks, that is, marks that may be confused with yours if yours is allowed. If she finds one or more marks that are confusingly similar, she will reject your trademark application. If, however, she finds no marks that are confusingly similar, and if there are no other problems with the application, she will allow the trademark to be “published for opposition” in the Official Gazette. This is the second hurdle, and is open to the public at large. If a third party believes that registration of your trademark will damage them, then they can file an “opposition” which, if successful, will persuade the PTO not to allow your trademark to be approved.
You should conduct a preliminary trademark search before applying for a federal trademark for several reasons. First, if there are identical or very similar marks already registered, a good search will turn these up. At this point you will likely return to the drawing board and create a different trademark. But don’t fret… you’ve saved potentially thousands of dollars by finding this information out ahead of time, in a relatively inexpensive way.
Without conducting a preliminary trademark search, your odds of having your trademark rejected are significantly higher! You should probably only file for trademark protection on trademarks that have a good chance of getting through the process, and you cannot make an informed guess without conducting a preliminary search.
The second reason for conducting a preliminary trademark search is to save you time. It takes upwards of six months before you hear back from the PTO after filing a trademark application. Within six months you may have already spent a small fortune on marketing and promotion of your trademark, just to have it rejected by the patent and trademark office. Now don’t think that conducting a preliminary trademark search guarantees that your application will sail through the PTO unscathed–the PTO has the final word concerning the acceptance or rejection of your trademark–but a search will certainly help you determine your odds on that particular mark.
One other good reason for conducting a search on your mark, whether or not you’re going to file for trademark protection, is that it will give you insights into other people and companies who are using similar marks throughout the United States. A good search will yield good business information that is valuable apart from trademark considerations. A search can be done in a few hours.
Date of First Use in Commerce
To file a complete trademark application you need to have the mark in interstate commerce, that is, in commerce across your state lines (with either another state or another country). If you are not in interstate commerce yet, you may still file a trademark “reservation” if you intend to use the mark in interstate commerce soon; however, a trademark “reservation” is more costly (eventually you will have to send in an additional $100), and is slightly more complicated. If at all possible, it is easier to file a complete trademark application as opposed to a trademark “reservation.”
Ensure to maintain some type of evidence supporting your date of first interstate commerce. You’ll need to indicate this date on your trademark application and you may need evidence in the event of any opposition.
Trademark Application
We discuss this more in the trademark application process. Just remember to complete the application form completely, and to attach the various items that are required, otherwise your application will be sent back to you unprocessed–this alone takes about two weeks!
1 to 2 Weeks Later
If you filed your trademark application with a return receipt postcard (recommended), you should be getting this back within one to two weeks. It will have your application number stamped on the back, so keep this postcard for your records.
3 to 4 Weeks After Filing
After about a month you’ll receive an official receipt from the PTO. Save this receipt, as it shows that the PTO received your application. You should examine the information returned on this receipt for errors.
4 to 6 Months After Filing
About half a year after you’ve filed your application, you will either get one of two things:
- 1. “Notice of Publication” — indicating that the examining attorney has approved your mark for publication in the Official Gazette, or
- 2. An “office action” letter (or telephone call) — indicating that there is a problem with your application and a response is required from you. You have three to six months to respond to this letter.
9 to 12 Months — Trademark Issued or Allowed
If there were no oppositions filed against your proposed trademark, you will receive a notice to that effect, followed within several weeks by your Registration Certificate (complete with Registration number). At this point you can use the “Circle-R” Ar symbol.
