Step 3: The Examination Process
Roughly 6 to 8 months after the application is filed your trademark is assigned to a trademark examining attorney in USPTO. Traditionally this wait was roughly 3 months, however, in recent years the USPTO has struggled to keep pace with the influx of new filings as a result of the Amazon Brand Registry and purported foreign applicant fraud. As a result, expect to wait 6 to 8 months until your application is initially examined.
Returning to the actual examination, the trademark examining attorney will review your trademark and determine whether it is entitled to registration (i.e., Is it too similar to another trademark already in use, etc.).
If the examining attorney determines that there are no issues which need to be addressed and that the trademark is entitled to registration the examining attorney will approve the trademark for publication (More on this Below).
However, if there are any minor issues (e.g., clarification of the applicant’s name or entity type, amendments to the identification of goods, disclaimers, color claims, etc.) or more significant refusals (e.g., trademark is merely descriptive or likely to cause confusion with a prior registered trademark) the examining attorney will issue what is known as an Office Action.
An Office Action is official correspondence from the USPTO. Currently, if an Office Action is issued you have 6 months to file an Office Action Response and get your trademark back on track to registration. Of note, in December of 2022 the USPTO is shortening this period to only 3 months.
Once an acceptable response is filed the examining attorney will approve the mark for publication.