Trademark clients generally want to know how long the application process takes, and when the mark will register. While there are many factors that affect the pendency of the application, including the examiner’s docket of pending applications, the process traditionally takes around 9.5 months. However, starting in Fall 2020, the USPTO received an increase in trademark applications, with 2021 filings up 63% from 2020 numbers.[i] This has resulted in a substantial increase in application pendency, as seen from the USPTO graph, reproduced below.
A typical trademark application, before the backlogs seen at the USPTO, pre-examination would take around 1 month, followed by an examiner analysis of the mark that would typically take around 3-4 months, and conclude with an allowance or office action, generally around 4-6 months from the original filing date. Once the mark was deemed allowed, the mark is assigned a publication date and published for a one-month window, after which time if no extensions or oppositions were filed, the mark would register. This process would typically take around 3 months.[ii] Thus, the application process is normally around 10-12 months.
For intent-to-use applications (ITU), the process is similar, except after publication a notice of allowance is issued, requiring the applicant to submit documents to show the mark’s use in commerce (a statement of use). After the statement of use is submitted, the documents are reviewed and, if accepted, the mark registered, which would typically take around 1 month.[iii]
However, as seen from the earlier graph, the time from filing to the first action has increased substantially, from the 3-4 month timeframe to 8.3 months, as seen below from the USPTO records. [iv]
In some instances, applicants have waited 12+ months for an initial action.
Similarly, review of a statement of use in an ITU application has increased. Official records indicate the review takes 12 days,[v] up from an average 11.25 days in 2020, though down from an average of 15.5 days in 2022.[vi]
Review of statements of continued use (§8 filing) have increased from an average of 37.5 days in 2020 to average of 92 days for 2022.[vii] Further, the current timeframe for review of the filing is 118 days.[viii]
Renewal applications (§8 & 9 filing) are similarly recorded at 119 days, currently.[ix]
Unfortunately, the data indicate that it will be some time before the trademark application timeframe recedes to pre-2021 levels.
[i] https://www.uspto.gov/blog/director/entry/what-a-huge-surge-in#:~:text=As%20of%20June%2017%2C%20the,of%20172%25%20over%20December%202019, last accessed Jan. 10, 2023.
[ii] https://www.uspto.gov/trademarks/trademark-timelines/section-1a-timeline-application-based-use-commerce, last accessed Jan. 10, 2023.
[iii] https://www.uspto.gov/trademarks/trademark-timelines/section-1b-timeline-application-based-intent-use, last accessed Jan. 10, 2023.
[iv] https://www.uspto.gov/dashboard/trademarks/application-timeline.html, last accessed Jan. 10, 2023.
[v] https://www.uspto.gov/dashboard/trademarks/application-timeline.html, last accessed Jan. 10, 2023.
[vi] https://www.uspto.gov/dashboard/trademarks/, last accessed Jan. 10, 2023.
[vii] https://www.uspto.gov/dashboard/trademarks/, last accessed Jan. 10, 2023.
[viii] https://www.uspto.gov/dashboard/trademarks/application-timeline.html, last accessed Jan. 10, 2023.
[ix] https://www.uspto.gov/dashboard/trademarks/application-timeline.html, last accessed Jan. 10, 2023.
