How long does it take to get a U.S. trademark registration?
The quickest is 9 months. To get to ® that quickly, you need to:
- Apply based on current use of the trademark in the United States.[i]
- Get through the Trademark Office review with no problems.[ii]
- Not have anyone oppose your application.[iii]
- Not have any outside reason for delay, like a government-wide shut down or a global pandemic. [iv]
What’s the worst case?
Twenty-eight years. And counting.
Yup. As of this writing,[v] there are 15 applications that are still pending that were filed more than 20 years ago and one of those was filed in March of 1993.
How does that happen?
- Since 1993, three companies have been arguing over the rights to HAVANA.
- Five companies have been held up by an argument over COHIBA.
- Two companies are tied up in a slugfest over DRUGSTORE.COM.
- One application was delayed because of a dispute over AGATHA.
Others delays are entirely self-inflicted:
- One applicant stuck it out through a 12-year suspension but now can’t seem to get around to filing a statement of use.
- One application has been held up for 13 years because the owner hasn’t paid a $40 fee.
The key is to know before you file if you’re likely to face even a short delay. A good trademark attorney should be able to tell you that.
[i] If you filed based on “intent-to-use”, that adds a step to the application process: Filing a Statement of Use. That will add at least a month to the time to registration. If you keep filing and paying for extensions, you can get up to 3 years to file your Statement of Use.
[ii] There can be one or more office actions issued by the Trademark Office. You can answer them right away, but you have up to 6 months to respond to each one. Even if you answer right away, it can add 2-4 weeks to the process. If the U.S. Trademark Office has just a minor problem, the examiner can call or send an email and then get it resolved within a day or two using an “examiner’s amendment.”
[iii] If someone opposes your application you have to deal with that before your application can move forward. That can take as long as going through a lawsuit.
[iv] After a full year of COVID 19, the shortest time to registration is closer to 11 months. During the government shutdowns a few years back, no time was added to Trademark Office review. Examiners just kept working right through the shut-down.
[v] March 2021. `FD < “2000000” and (live)[ld] and `RN = “0” and (1A 1B)[cb]
|Mark||Filing Date||App #.||Applicant||What’s going on|
|HAVANA CLUB||6/25/1999||75751393||Bacardi & Company||Suspended pending cancellation of 92024108.|
|GRAND HAVANA RUM||3/5/1993||74365176||Ricardo Arregui||Opposition #121112 Proceedings are suspended pending final disposition of Cancellation #024108.|
|RUM HAVANA CLUB |
RUM HABANA CLUB ARECHABALA
|3/23/1995||74650678||Gloria Marquez-Arechabala||Suspended for 74522925 and 74572667.|
|HAVANA CLUB||9/12/1994||74572667||Bacardi & Company||Cancellation No. 024108 suspended for Civil Action No. 04 CV 00519.|
|COHIBA CARIBBEAN’S FINEST||10/30/1998||75580119||Cohiba Caribbean’s Finest Rum||Several office actions and then a suspension letter in 2000: 75012912 75051706 75116037 75226002.|
|LAZARO COHIBA||6/7/1996||75116037||Becle, S.A.B. de C.V||75012912 75051706|
|COHIBA||10/31/1995||75012912||Tequila Cuervo La Rojena S.A. de C.V.||Opposition proceeding suspended pending outcome of Cancellation #92025859.|
|COHIBA||1/21/1997||75228225||Cohiba Clothing Co.||Suspended in 1998. Remains suspended. 74686067 75051706|
|COHIBA||2/1/1996||75051706||General Cigar Co., Inc.||Suspended in 1997 for 75012912. Opposition #117311|
|DRUGSTORE.COM||2/9/1999||75640001||Walgreens Co.||Suspended because of 75566403. Amended to the Supplemental Register; and office action based on merely descriptive. 2014 Final refusal on merely descriptive. Requested reconsideration. Now suspended because of 75566403, 75890295, 77823181, 78725602, 85434188|
|DRUGS.STORE||8/12/1999||75755139||Peter H. Proctor|
|EINSTEIN||7/16/1998||75519755||The Hebrew University of Jerusalem||Suspended and then an opposition. Finally got NOA in 2019 and has now filed 3 requests for extensions of time to file SOU.|
|WWW.FREEE.COM||11/12/1999||75847196||Saeid Yomtobian||Office actions and Statement of Use held things up for 4 years. Then applicant filed an assignment but didn’t pay the fee to have the assignment processed. It’s been suspended for 13 years for the failure to pay $40.|
|MYSTERY OF AGATHA||8/16/1999||75755566||Agatha Brown||Suspended because of 75649188, which was finally registered in 12/2020. Agatha Brown owned two prior registrations. Agatha Diffusion Société à Responsabilité Limitée had a registration going back to 1992 but they had to cancel Ms. Brown’s applications before they went through.|