Trademark Application and Office Actions

TrademarKraft and Nyall Engfield, Esq.

Trademark attorneys with a focus on Office Actions

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How long does it take for a trademark to register

It usually takes 10 months after filing before an Examining Attorney looks at the file. She may accept the trademark as filed, or issue an office action rejecting the application, requiring clarification or modification of the application. Overall, the majority of trademark register within about 12 months.

You can check the current processing wait times to find out how long your trademark filing could take. Filing your
initial application, response form, and post registration accurately can speed up the process. You can help by reading these tips on avoiding processing delays.

Check the latest processing times.

I just received an extension on an Opposition - what does it mean?

The US trademark legal system allows third parties to oppose pending trademark applications. Opponents can request extensions for good cause, such as investigating claims, conferring with counsel, or seeking representation. Extensions can also be used as a negotiation tactic, allowing for coexistence agreements or new trademark applications. If the opposer files an opposition, the Trademark Trial and Appeal Board (TTAB) will institute an opposition proceeding with a scheduling order. An additional 60-day extension can be requested beyond 120 days from publication, provided the applicant consents or shows extraordinary circumstances.

If a potential opposer has applied for an extension of time, that means they are either discussing whether to oppose your mark, or they want to provide time to negotiate with you, to narrow the mark or ask you to cancel it.

I received an office action - What do I do?

An Office Action is a notice issued by the USPTO to address concerns about a trademark application or potential infringement on another person's mark. It is not a rejection, but rather a response to the application. Common reasons include confusion between a trademark and another, or a mark being descriptive or generic. Office actions can result in denial or suspension of the application, or require minor changes or additional information. If not responded within three months, the application will be abandoned, and all rights and filing fees will be non-recoverable. Responding to an Office Action requires addressing the examiner's objections, and if a final action is received, compliance with requirements or filing an appeal with the trademark trial and appeal board is required.

You have three months from the Office Action date to file a response with a further 3-month extension possible. However, a skillful response addresses the Examiner's objections without unnecessarily giving away rights. We can help you manage the response, and get through the Examination stage faster. Contact us.

When can I register on the Amazon Brand Registry?

There are a number of advantages for businesses with registered trademarks to using Amazon Brand Registry, but there are some details that need to be made clear regarding the benefits it offers to sellers.

The following are some advantages of using Amazon's Brand Registry:

  • Control. Gives you, the brand owner, more authority over the information on your listing.
  • Brand surveillance. gives you a tool to keep an eye on your brand on Amazon.
  • Dedicated Assistance. a specific internal team for submitting and escalating IP infringement accusations, as well as a different, more effective internal staff to assist with rectifying and resolving inaccurate listing contributions and variants.
  • Good content. provides you with access to Amazon A+ Content so you may enhance the information on product listings.
  • Stores on Amazon. gives you access to Amazon Stores so you may build a multi-page store to market your business.
  • Promoted Content. enhances visibility with cutting-edge advertising techniques like Sponsored Brands and Sponsored Display ads.
  • Live on Amazon. enables you to use Amazon Live to webcast and communicate with potential customers.

You can sign up your company for the Amazon Vine Program to receive authenticated product reviews using Amazon Vine.

Conversely, Amazon's Brand Registry won't:

Prevent other sellers from selling your branded products in resale.
Give you the option to restrict or allow other vendors to sell your brand.
Give someone else the authority to file infringement complaints against other merchants on your behalf as the brand owner.

Are trademarks required for Amazon's Brand Registry?

You must have a registered trademark for your product in order to apply for the Brand Registry program. This requires that your trademark be registered with the USPTO (United States Patent and Trademark Office).

How can I register my trademark?

You must perform the following actions in order to start the process:

  • Do research. Once you've chosen a name and/or logo, make sure it is original and that no other companies are using the same name as a registered trademark. By conducting a thorough search in their official database on the USPTO website, confirm this.
  • File your trademark application in a chosen class. Similar to choosing a product category on Amazon, this will specify the kinds of goods that go under your registered brand. The trademark's price will vary according to its class.

Have a trademark lawyer with a license. They can submit an application for your trademark. Lawyers who provide this service might be found online or in your neighborhood.

How much time does it take to register a trademark?

In most cases, you can anticipate having to wait at least a year for the USPTO to respond.

Fortunately, getting your brand certified by Amazon doesn't take a year.

The IP Accelerator is a tool provided by Amazon that links Amazon business owners with vetted intellectual property (IP) lawyers who can assist you with the trademark application process.

Before your trademark application is approved, Amazon will accept your product for the Brand Registry.

How long does it take to get approved for the Amazon Brand Registry?

The complete approval procedure should take roughly two weeks, presuming you already have a trademark or have submitted a request through the IP Accelerator program. Just be sure to submit all the information Amazon requires for your brand the first time.

As you evaluate the eligibility requirements, keep in mind that your brand must have a registered trademark that is currently in use in each of the countries where you wish to enroll.

If I have been opposed, should I abandon my trademark?

No, don't be afraid of the process - we can guide you through for less than you think. The opposition process is used by other marks, particular famous one, to scare you into abandoning your trademark. But often they do not have strong grounds to oppose. Contact us for a free assessment.