We’ve written about trademark basics, about the importance of trademarking your brand, about choosing a brand that sells, and about how to choose a strong mark. We have even written about the differences between U.S. and Canadian trademarks. But we have not delved into the mechanics of prosecuting a trademark application because, quite frankly, the details can be a bit uninteresting. But having a basic understanding of the timeline of events that take place during a trademark prosecution (the trademark filing process) can help cannabis business owners to understand what to expect, the importance of filing early, and how to make sure they don’t lose their brand to someone else.
The timeline for trademark prosecution varies somewhat depending on whether you are filing your trademark application based on actual use (meaning you’ve already sold goods or services bearing the mark in commerce) or based on an intent-to-use (meaning you haven’t sold branded goods yet, but you intend to do so in the near future). The USPTO provides a couple of great flow charts laying out the timeline for applications, which I will summarize here.
For a Section 1(a) application based on actual use, it will take approximately three months after filing before an examining attorney actually reviews your trademark application. Following that initial review, the examining attorney will either publish the mark for opposition, or issue an office action setting forth any deficiencies with the application. If an office action issues, the applicant has six months to respond, or the application will be abandoned.
Office actions can issue for a multitude of reasons, including simple problems like a misclassification of entity or a failure to provide a translation of a foreign word. These types of office actions are usually easy to respond to and remedy. Other office actions, however, issue for more substantive reasons, such as confusing similarity to a previously registered mark. These types of office actions require a more lengthy response arguing in favor of registration.
If no office action issues, and an application is approved for publication, the mark will be published in the Official Gazette (OG). The OG is a weekly online publication that gives notice to the public of the USPTO’s intent to issue a trademark registration. Any party who opposes the registration (for example, due to a claim of prior common law rights) has thirty days to note their formal objection. If no parties object within the thirty day opposition period, the mark will be cleared for registration and that registration will issue within approximately three months.
The next filing for a registered mark occurs between the fifth and sixth years of registration, where a trademark owner must file a Declaration of Use or Excusable Non-Use under Section 8.
The timeline for an application filed on an intent-to use basis is the same all the way through the issuance of office actions and publication. However, after an intent-to-use mark is published, a Notice of Allowance will issue approximately two months later. This notice indicates that the USPTO intends to register the mark once a sufficient statement of use is filed. After the Notice of Allowance is sent, the clock starts ticking for another filing. An applicant has six months from the Notice of Allowance to either file a statement of use (meaning you must have used the mark in commerce), or to file for a six-month extension. An applicant who files based on an intent-to-use can file up to five of these six-month extensions, but must be able to show use within 36 months of the Notice of Allowance.
All of the above timelines are as true for cannabis related trademarks as for any other kind of trademark, though it is true that the USPTO may examine your trademark a bit more closely if it has apparent cannabis connections.
Of course, it’s important if you intend to file a trademark application to have reasonable expectations surrounding the timeline for your trademark registration. But understanding the trademark registration process has other benefits, even to those not considering filing for a federal trademark. If you have been using a trademark in commerce, you likely have common law rights in that mark, even if you haven’t filed for registration. If another company files a trademark application claiming ownership of the same mark, and you want to oppose that registration, you must do so within the thirty-day opposition window. Otherwise, you will be forced to wait for the registration to issue to file a petition to cancel (which in the case of an intent-to-use application could take up to three years), or for the application to be abandoned. You may want to purchase trademark-monitoring services to ensure you know if a potentially similar mark to your own is published in the OG. These services can be a useful tool in making certain your trademark rights are not undermined.
Regardless of whether you intend to file a federal trademark application or not, if you have a brand, you should understand the registration process. Failure to stay on top of monitoring the use of your mark can result in loss of any rights in your brand.