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Why might a trademark application be delayed and what can you do about it? What are reasonable times for each step of the process?
- 23 May, 2024
- Nyall Engfield
Why might a trademark application be delayed and what can you do about it?
There are several reasons why a trademark registration process might be delayed, and the reasonable timelines can vary significantly depending on the specific circumstances. Here are some common reasons for delays and what can be done about them, along with typical timeframes for each step:
- Office Actions: Reason: The trademark examiner issues an office action raising objections or requesting additional information. What can be done: Respond to the office action promptly, addressing the objections or providing the requested information. Typical timeline: 6-12 months from filing to receiving an office action.
- Suspensions: Reason: The trademark application is suspended to await the outcome of similar trademarks or registrations that are in the grace period for renewal. What can be done: Respond to the Suspension to argue against the similarity of the other mark and/or remove goods/services to avoid the similarity.
- Opposition Proceedings: Reason: A third party opposes the registration of the mark, initiating an opposition proceeding. What can be done: Vigorously defend the application against the opposition and provide evidence supporting registration. Typical timeline: Oppositions can take 12-18 months or longer to resolve.
- Divisional Applications: Reason: The trademark office requires the application to be divided into separate applications for different goods/services. What can be done: Comply with the division requirement and file divisional applications as instructed. Typical timeline: Divisionals add several months to the process.
- Requests for Extension of Time: Reason: The applicant or an opposing party requests extensions of time to respond to office actions or other deadlines. What can be done: Request extensions judiciously and respond as soon as possible to avoid unnecessary delays. Typical timeline: Each extension can add 2-6 months to the process.
- Appeals: Reason: The applicant appeals an unfavorable decision by the trademark office. What can be done: Prepare a strong appeal brief and follow the appeal procedures diligently. Typical timeline: Appeals can take 12-18 months or more to resolve.
What are reasonable times for each step of the trademark process?
As for reasonable timelines for trademark registration, here are some general estimates for a relatively straightforward application without significant delays:
- First office action: 10 months from filing
- Response to office action: 2-4 months from the action
- Publication for opposition: 1-3 months after a successful response
- Registration (if no opposition): 2-4 months after publication
However, these timelines can vary significantly based on the specific circumstances, the trademark office's workload, and any complications that arise during the prosecution process.
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