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Guide to the U.S. Trademark Application Process

A trademark is a word, phrase, symbol or design that distinguishes your goods or services from those used by others in commerce. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is a legal process that gives you nationwide rights, but it is not automatic—the USPTO examines every application to ensure that the mark is registrable and does not conflict with existing marks. The USPTO reserves the right to approve or deny any application. This guide outlines the steps in the application process, the expected timing, and the information you must provide to our law firm so that we can prepare and file your application.

Is a Trademark Application Right for You?

Before investing in a federal trademark application, it is important to make sure that trademark protection—not a patent, copyright, domain name or business name registration—is what you need. The USPTO explains that trademarks protect brand names and logos, whereas patents protect inventions and copyrights protect original works of authorship (writings such as novels, poems, etc.; visual works such as photos or paintings; musical creations such as lyrics or musical compositions).

Then, once you are sure that a trademark protection is what you want, you should conduct a clearance search to see whether similar marks already exist and evaluate whether your mark is strong enough to be registrable. Marks that are generic, merely descriptive or too similar to existing marks will not be registered by the USPTO. Still, clearance is not a warranty of registration, it is a step on the preparation of your registration. A USPTO examiner (a lawyer that works for the USPTO) will have the right to evaluate and decide whether your mark may be registered or not. Similarly, to what happens in a trial, your attorney will prepare and present your case, but the decision will be outside if his/her hands once it is presented in the application and office action responses.

Preparing to Apply

Choosing the Mark and Filing Basis

• Mark format. Decide whether you wish to register a standard character (word only) mark or a special form mark that includes stylization, color or a design. Your choice affects the protection you receive and the evidence you must submit to the USPTO.
• Drawing. Every application must include a drawing depicting the mark exactly as you want it registered. Only one mark can be included per application.
• Filing basis. The filing basis determines which timeline applies. Most applicants file under:
  • Section 1(a) (use in commerce) – you are already using the mark in commerce. You must submit at least one specimen (evidence) showing how the mark is used with your goods/services.
  • Section 1(b) (intent to use) – you have a bona fide intention to use the mark in commerce in the near future. You will later need to file a Statement of Use to show actual use before registration.
  • Section 44 or 66 – based on a foreign application or registration or an international (Madrid Protocol) filing.

Identifying Goods and Services

You must identify the goods and/or services on or in connection with which you use (or intend to use) your mark. The USPTO advises using clear, common word descriptions and classifying the goods/services using the International Nice Classification system. Each class carries a separate filing fee.

Information Clients Must Provide

Applicant’s legal name and domicile address
Provide the full legal name and physical (domicile) address. P.O. boxes are not sufficient. If you operate through a company, provide the company’s full legal name and principal place of business.

Specimen of use (Section 1(a) only)
Provide evidence showing how the mark is used in commerce (e.g., photographs of product labels or packaging for goods; advertisements or website screenshots for services). The specimen must demonstrate that consumers directly associate the mark with your goods or services.

Dates of first use (Section 1(a) only)
Specify the date you first used the mark anywhere and the date you first used the mark in interstate commerce.

Timely and complete information helps avoid processing delays.

Steps and Timeline of the USPTO Process

The overall timeline depends on the filing basis and whether the USPTO raises issues or third parties oppose the mark. The average time from filing to first action is about 5.9 months, with registration or abandonment around 12 months after filing. The key steps are summarized below.

1. Filing the Application (Months 0–0.5)
After we submit your application through the USPTO’s Trademark Center, the USPTO assigns a serial number. You may check its status using the Trademark Status and Document Retrieval (TSDR) system. In both use based and intent to use filings, it typically takes six to nine months for the application to be assigned to an examining attorney.

2. Examination by the USPTO (Months 6–10)
An examining attorney reviews the application for compliance with legal requirements and searches for conflicting marks. Filing fees are not refunded, even if the application is refused. After review:

• Approval and publication (Step 3a). If no issues are found, the USPTO approves the mark and schedules it for publication in the Trademark Official Gazette (TMOG). Publication usually occurs about one month after approval.
• Office action (Step 3b). If issues exist (such as likelihood of confusion or technical errors), the USPTO issues an office action explaining the refusals/requirements. You must respond within three months of the issue date (with an optional three month extension for a fee). Failure to respond results in abandonment. Our firm will prepare and file responses to address these issues.

When a response is filed, the examining attorney reviews it and will either approve the mark for publication (Step 5a/5b) or issue a final refusal. A final refusal may be appealed to the Trademark Trial and Appeal Board (TTAB). Appeals or further responses must be filed within three months (with a possible extension).

3. Publication and Opposition (Months 9–12)
When the mark is approved, it is published in the TMOG. Within 30 days of publication, any person who believes they may be harmed by registration can file an opposition. Oppositions are handled like litigation before the TTAB; they can extend the process. If no opposition is filed (or if opposition is unsuccessful), the application proceeds to the next stage.

4. Registration or Notice of Allowance

• Use based applications (Section 1(a)). The USPTO will register your mark approximately three months after publication if no oppositions are filed and all requirements are satisfied.
• Intent to use applications (Section 1(b)). The USPTO issues a Notice of Allowance (NOA) about two months after publication. The NOA is not a registration; it gives you six months to submit a Statement of Use (SOU) showing actual use in commerce. You may request extensions every six months (up to five total) while you work toward using the mark. If you fail to file an SOU or extension within six months of the NOA date, the application abandons. Once the SOU is accepted, the USPTO registers the mark, usually within two months.

5. Post Registration Maintenance
Registration is not the end of the process. To keep your registration active, you must file maintenance documents. Maintenance of your trademark is outside of the scope of our representation, however, we include a list of important deadlines so you keep them in mind.

• Section 8 Declaration (between years 5–6). Between the fifth and sixth year after registration, file a Declaration of Use or Excusable Non Use and pay a fee. Failure to file results in cancellation.
• Section 8 & 9 Renewal (every 10 years). Within the year before each tenth anniversary of registration (and no later than six months after), file a combined Declaration of Use/Non Use and Application for Renewal.

Important Considerations

• No guarantee of registration. The USPTO explicitly states that not all applied for trademarks register. The examining attorney may refuse registration on various grounds (e.g., likelihood of confusion, descriptiveness, deceptive matter). Oppositions or failure to meet deadlines can also prevent registration.
• Timeliness is critical. Missing an office action deadline or failing to file an SOU or maintenance filing will cause the application or registration to abandon, requiring costly petitions to revive or new applications.
• Costs. USPTO fees are charged per class of goods/services and are non refundable, even if the application is refused Additional fees apply for extensions, appeals, and maintenance filings. Our firm charges separate professional fees for preparing and prosecuting the application.
• Third party rights. Obtaining a federal registration does not ensure that you will not face future disputes. You remain responsible for policing and enforcing your trademark rights.

Our goal is to navigate the USPTO process efficiently, but please be aware that the USPTO controls the examination timeline and ultimate decision. By supplying the required information promptly and working closely with us, you will help ensure the best possible outcome.