The trademark application process can be a long one - and certainly much longer than people applying for the first time (or the first time in a new region) might realise. There are some common factors that will impact your time frame to successful registration and an examination of these might help you to identify areas where you can speed up the process....although the average time will be largely dictated by the region in which you are applying. There are some common factors that will impact your time frame to successful registration and an examination of these might help you to identify areas where you can speed up the process!
The quality of the new name you choose will play a strong role in the time frame to getting a trademark successfully registered. A candidate that conflicts with an existing mark for similar goods and services will likely ultimately be rejected and you will have to go back to the drawing board. In a similar way, marks that are considered descriptive for your goods and services will not make it past the first hurdle, slowing your progress.
Long Clearance Times
The trademark application period officially begins once you have submitted your application but of course, a potential new brand will have consumed time and resources well in advance of that date in terms of product development, market research and branding ideas. Traditionally, all of this would have taken place long before you approached the stage of seeking a clearance or availability search which typically could take anywhere from days to weeks before discovering whether your new brand name ‘had legs’. Newer clearance tools utilising technology assistance can give you a picture of risk in seconds and are often incorporated into the research and development stages to avoid investing time and creative energy into potential names that are unlikely to succeed as a trademark.
Incomplete Or Incorrect Information
The completion of the application is in itself a common source of delay with each Intellectual Property Office having their own application forms, rules and stumbling blocks. Care taken in filling out the relevant forms and ensuring that you have all the details correct and that they fulfill requirements can save a lot of time in your overall application process. If you aren’t familiar with the forms or the process, utilising the experience and expertise of an attorney can save you the time and expense of a refusal. For example, in a recent webinar on applying to the USPTO, Randy Michaels from the law firm Trust Tree noted that the better part of applications from outside the US that experience issues, run into difficulties with the requirements for goods and services descriptions differing from those in other regions.
Intent to Use Vs Use
The core tenet of trademarks is that is that they are an identifier of the source of a particular product or service in trade and the use of the brand in commerce is an essential component of acquiring and maintaining protection. Different regions have different requirements regarding use. In the EU, you must begin using (and continue to use) your trademark within 5 years of your application. It is not strictly necessary to have your potential trademark in use prior to your application although of course, you can do so. The US requirements however, are different. If you are not already using your potential brand in commerce, you can apply for a trademark registration on an ‘intent to use’ basis but you should be aware that there are necessarily extra steps in the application process in those cases and budget time accordingly.
Missed Deadlines For Correspondence
Should the Intellectual Property Office to which you have applied, find an issue with your application as supplied, they will issue an office action to which you will have a specified period of time to reply depending on the region. Missing those deadlines to reply or provide further information or details can not only slow down your application but in some cases, can see the application fail completely.
Unpaid Or Incorrect Fees
The system for payment of fees varies from office to office. In some cases, payment is required with the application and in others there is a period of time to pay the relevant fees. Further confusion can be caused when making payments in foreign currencies by bank draft or cheque as the exchange rate can differ between the day of writing the cheque and its receipt in the office. It’s a small detail but one that can have a significant impact on the length of time your application will take.
If another party finds your application objectionable and files an opposition to registration, this can delay your application by quite some time. Many potential problems can and should be ruled out by a robust and thorough clearance process but the grounds for potential opposition are many and sometimes tenuous!
Applications to register a trademark across more than one class would intuitively take longer for the Intellectual Property Office to process but the impact that this can have will vary from region to region. You can see the effect in some regions in our updated ebook (Insert title of ebook here!).
Intellectual Property Offices Worldwide
Every Intellectual Property Office around the globe has its own systems, rules and regulations and even an application through the World Intellectual Property Office in Geneva will not escape the requirements of the individual offices you have designated.
While the majority of offices have a digital system for applications in place, some offices will still require paper applications or still offer them as a facility. In those cases, utilising the digital option is generally considered to be faster and often cheaper.
Predicting the time frame for an application in any given region is a difficult task and while a definitive period is impossible to define, you can download our handy guide to the average time frames for many of the most popular Intellectual Property Offices here.
A successful registration is only half the battle of building a new brand that will resonate with your customers and increase the profitability of your company. Legacy monitoring tools have been expensive and cumbersome, meaning that many brand owners have resorted to only watching the most critical brands in key regions and taking risks with other brands in other areas due to time and budget constraints. Newer tools designed for the digital age will help you to protect all your brands while reducing the cost and workload.
This blog was updated for accuracy in October 2018. It was originally published in November 2017.