Nine Months or Twenty-Eight Years

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?

Companies fighting over the rights to a trademark account for most of the really long delays:[vi]

  • 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]

[vi]

MarkFiling DateApp #.ApplicantWhat’s going on
HAVANA CLUB6/25/199975751393Bacardi & CompanySuspended pending cancellation of 92024108.
GRAND HAVANA RUM3/5/199374365176  Ricardo ArreguiOpposition #121112 Proceedings are suspended pending final disposition of Cancellation #024108.
RUM HAVANA CLUB
RUM HABANA CLUB ARECHABALA
3/23/199574650678Gloria Marquez-ArechabalaSuspended for 74522925 and 74572667.
HAVANA CLUB9/12/199474572667Bacardi & CompanyCancellation No. 024108 suspended for Civil Action No. 04 CV 00519.
     
COHIBA CARIBBEAN’S FINEST10/30/199875580119Cohiba Caribbean’s Finest RumSeveral office actions and then a suspension letter in 2000: 75012912 75051706 75116037 75226002.
LAZARO COHIBA6/7/199675116037Becle, S.A.B. de C.V75012912 75051706
COHIBA10/31/199575012912Tequila Cuervo La Rojena S.A. de C.V.Opposition proceeding suspended pending outcome of Cancellation #92025859.
COHIBA1/21/199775228225Cohiba Clothing Co.Suspended in 1998. Remains suspended. 74686067 75051706
COHIBA2/1/199675051706General Cigar Co., Inc.Suspended in 1997 for 75012912. Opposition #117311
     
DRUGSTORE.COM2/9/199975640001Walgreens 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
DRUGSTORE.COM2/9/199975640001Walgreens Co. 
DRUGS.STORE8/12/199975755139Peter H. Proctor 
     
EINSTEIN7/16/199875519755The Hebrew University of JerusalemSuspended and then an opposition. Finally got NOA in 2019 and has now filed 3 requests for extensions of time to file SOU.
     
WWW.FREEE.COM11/12/199975847196Saeid YomtobianOffice 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 AGATHA8/16/199975755566Agatha BrownSuspended 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.

Trademark As a Trademark

Sometimes I imagine monks sitting silently in their cells pondering whether the word “trademark” can, itself, be a trademark

Their contemplation serves little purpose because that question has already been answered.

There are two meanings to the word “trademark”:

  • Lawyer’s definition: A word, symbol, or device used to identify the source of goods or services; and
  • Non-legal definition: A distinctive characteristic or object, as in “They were wearing their trademark leather jacket.”

Most trademarks that include TRADEMARK use it in the non-legal sense.

The example to the right and in the featured image is my favorite because it uses TRADEMARK in the lawyer-definition sense: TRADEMARK is the name of a restaurant around the corner from the U.S. Patent and Trademark Office in Alexandria, VA.

There are plenty of trademark registrations at the U.S. Trademark Office that include TRADEMARK in the non-legal sense.[i]

The most well-known is undoubtedly TRADEMARK COLLECTION owned by Wyndham Hotels and Resorts.

I especially like the logo that’s part of this trademark for plastics. It’s cool to look at and suggests plasticity without coming right out and saying it.

Use of TRADEMARK as a trademark is popular for foods and food services. There are registrations for pizza, coffee, beer, restaurant services, and burgers. Here are some of my favorites.

It’s fun to tell the stories that lurk behind the trademarks we experience every day. What trademark have you seen lately that you’d like to hear about?


[i] Here’s a list of the goods and services that are covered by registrations that include the word TRADEMARK, where that word isn’t used to refer to a trademark in the legal sense:

  • Video production services
  • Music CDs
  • Website design
  • Credit union services
  • Housewares
  • Swag
  • Art prints
  • Hotel services
  • Hardware
  • Veterinary medicine
  • Plastics
  • Anatomical models
  • Soundproofing products
  • Automobile dealerships
  • Beer
  • Construction services
  • Fonts and typefaces
  • Pizza
  • Restaurant services
  • Online retail services
  • Leather goods
  • Toys
  • Tours operations
  • Gaming equipment
  • Clothing
  • Jewelry
  • Banking and financial services
  • Event planning
  • Warehousing and trucking
  • Scrap metal recycling
  • Steel cabinets
  • Coffee
  • Window shutters