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Trademark Registration Process and Timeline

Updated: May 29, 2023

Trademark Registration

A Trademark Can Be Registered For:

  1. Your Company Name

  2. Your Company Logo

  3. Your Company Slogan or Tagline

Once you obtain a registered trademark, this provides you with the exclusive right to use that trademark throughout the United

States, in connection with the selected product or service category. No other entity or individual may use an identical or confusingly similar trademark to yours. This right builds consumer trust and reliability, and ensures that no one can infringe on your intellectual property rights.

Clearance Search Process

1. Clearance Search Report - Before a trademark application can be filed, the desired

mark must be available for registration. This means that a mark will not proceed to

registration if there is already an identical or confusingly similar mark registered with

The United States Patent and Trademark Office (“USPTO”). Therefore, before an

application is submitted, a clearance search is done, where we review all pending and

registered marks on the federal registry, domain names, and social media handles, to

ensure there are no other marks that would potentially conflict with your desired


2. Clearance Search Report - Our Firm uses a software to conduct this clearance search,

and it produces a Clearance Search Report, of approximately 200 pages. Our Firm

reviews the Report and determines whether or not the client should proceed to application

for the desired trademark.

3. Opinion Letter - Based on the Firm’s review of the Clearance Search Report, the Firm

will provide an opinion letter to you, advising you how to proceed, and any potential

risks involved.

Application Process

1. Application - Assuming the Firm’s opinion letter advises you to proceed with the

application for the desired trademark, we will file the application for you, under the

category(s) of goods or services you are using the trademark for. The estimated wait time

for the USPTO to first review your application is approximately 8-9 months.

2. Office Actions - Throughout the application process, issues may arise, where the USPTO

will require additional information or documentation before the application can proceed.

These requests made by the USPTO are called Office Actions. There are 2 types of Office

Actions one can receive:

a. Administrative Office Actions - This is where the USPTO requires minor

clarifications or requests on the application, which are resolved easily and


b. Substantive Office Actions - This is where the USPTO determines that there

may be a conflicting mark either pending or registered, in which your application

conflicts with. In order to respond to a Substantive Office Action, a legal memo is

submitted to the USPTO, convincing them that the 2 marks in question are

different and distinguishable, and can both exist on the federal registry without

conflicting with each other. Once any and all Office Actions are resolved, the

application proceeds to Publication.

3. Publication - Your mark is ready to be published in the Trademark Office’s Official

Gazette. Any third party who has legal grounds to oppose your application has a period of

thirty days from the publication date to file a Notice of Opposition to your application. If

we receive a Notice of Opposition (which we believe is unlikely), we will be contacted

by the USPTO. We will then consult with you and decide the appropriate steps. If no

opposition is filed, the mark will proceed to registration after the publication period ends.

This could take several weeks.

a. Statement of Use - If the trademark was not already being used in commerce in

the United States at the time the application was submitted, an additional filing

will be required, showing that the trademark is being used in commerce, before

proceeding to registration. A trademark cannot be registered unless it is being

used. This filing is called the Statement of Use Filing. If the trademark was

already in use at the time the application was submitted, a separate Statement of

Use Filing will not be required, and the proof of use will be submitted along with

the initial application. The application will not proceed until a Statement of Use

Filing is made, if required.

4. Registration - Once your trademark is registered, it will be published on the federal

registry and you will receive a registration certificate. You may begin using the ®

symbol. The timeline from the application filing date to the registration date is

approximately 12-18 months.

5. Maintenance and Renewal Filings

a. Between the 5th and 6th year after registration, you need to file an affidavit of

continued use, stating that you are still using the registered mark in commerce in

the United States.

b. Every 10th year after registration, you will need to file a renewal of registration.

We will remind you as these dates approach.

(646) 612-7120 | 400 Madison Avenue, Suite 17D, New York, NY 10017 |

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