Trademark Registration Process

Trademark Registration Process

The federal trademark registration process from start to finish typically includes the following steps:

• Choose a Trademark: The first step is to choose a trademark that you want to register. It could be a word, phrase, logo, or symbol that you will use to identify your goods or services.
• Conduct a Trademark Search: Before you file a trademark application, it is important to conduct a trademark search to ensure that the trademark you want to register is available and not already in use by another party.
• Prepare and File a Trademark Application: The next step is to prepare and file a trademark application with the United States Patent and Trademark Office (USPTO). You will need to provide information about your business, the goods or services you offer, and your proposed trademark.
• USPTO Examination: Once your application is filed, the USPTO will examine it to ensure it meets all the requirements and to check if it is eligible for registration.
• Office Action: If the USPTO finds any issues with your trademark application, it will send you an Office Action, which will outline the problems and give you the opportunity to make changes or provide additional information.
• Publication: If the USPTO determines that your trademark is eligible for registration, it will publish it in the Trademark Official Gazette. This gives other parties a chance to oppose your trademark registration if they believe it will damage, dilute or otherwise harm their brand and trademarks.
• Opposition: If someone opposes your trademark registration, you will need to respond to the opposition and try to resolve the issue.
• Allowance: If there are no objections or the objections have been resolved, the USPTO will issue a Notice of Allowance, which means that your trademark application has been preliminarily approved and you may not submit specimens showing your trademark in uses in interstate commerce with the specified goods or services described in the trademark application.
• Trademark Registration: Once you receive a Notice of Allowance, you will need to submit a Statement of Use, which confirms that you are using your trademark in commerce. After that, absent extraordinary circumstances, the USPTO will register your trademark and issue a certificate of registration.
• Maintenance: Once your trademark is registered, it is important to maintain it by filing maintenance documents, such as Declaration of Use and Incontestability between the fifth and sixth year anniversary of the trademark registration date, and another Declaration of Use every ten years of the trademark registration date, to keep the registration active.
• Monitoring: Once your trademark is registered, it is also important to actively monitor the marketplace for infringing trademarks, counterfeits, and any other use of a similar mark that may damage of dilute your brand’s trademarks.

Note: This is a general overview of the trademark registration process and may vary depending on the specifics of each case.

How Long Does It Typically Take To Register A Trademark With The USPTO?

The length of time it takes to register a trademark with the USPTO can vary depending on several factors, including the complexity of the trademark, the number of office actions and oppositions, and the workload of the USPTO. On average, the trademark registration process can take anywhere from ten (10) or so months to several years.

Typically, after filing a trademark application, it can take the USPTO six (6) to eight (8) months (sometimes longer) to conduct a preliminary examination of your trademark application and issue an Office Action, if necessary. If there are no legal problems with your trademark or issues with your trademark application, it can take another several months for the trademark to be published in the Trademark Official Gazette (TOG) and for the USPTO to issue an Allowance after the thirty (30) day trademark publication period ends. After that, it can take a few more months for the USPTO examiner to review and approve the Statement of Use showing the trademark in use in interstate commerce. After that, it can take a few more months for the USPTO to issue the trademark registration certificate.

However, it is important to note that the timeline for the trademark registration process can be impacted by various factors, such as a high volume of trademark applications, oppositions from third parties, and other legal challenges. Therefore, it is always a good idea to request a more accurate estimate of the timeline for registration when you consult one of our trademark attorneys.

USPTO Principal Register vs Supplemental Register

The United States Patent and Trademark Office (USPTO) maintains two registers for applicants seeking trademark registration. The Principal Register is the primary register of the USPTO. The Principal Register is reserved for those trademarks that fall into the arbitrary, fanciful, inventive, and suggestive categories.  The Principal Register also includes those descriptive trademarks that have acquired distinctiveness (or secondary meaning) in the marketplace. When a trademark has been registered on the Principal Register, the trademark is entitled to all the rights provided by the Trademark Act.

Certain trademarks that are not eligible for registration on the Principal Register (generally due to the mark being descriptive of the goods and/or services), but are capable of distinguishing an applicant’s goods and/or services after the trademark has acquired distinctiveness (or secondary meaning), may be registered on the Supplemental Register.

The advantages of owning a registration on the Principal Register include the following:

• Constructive notice to the public of the registrant’s claim of ownership of the trademark;
• A legal presumption of the registrant’s ownership of the trademark and the registrant’s exclusive right to use the trademark in commerce on or in connection with the goods and/or services listed in the registration;
• A date of constructive use of the trademark as of the filing date of the trademark application;
• The ability to bring an action concerning the trademark in federal court;
• The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods;
• The registrant’s exclusive right to use a trademark in commerce on or in connection with the goods and/or services covered by the registration can become “incontestable,” subject to certain statutory defenses;
• The use of the United States registration as a basis to obtain trademark registrations in certain foreign countries

Trademark Registration Based on Use in Commerce

Trademark registration based on use in commerce (Section 1(a)) may be used when a business or individual is currently using the trademark in commerce with every product and/or service described in the trademark application. At a minimum, the trademark applicant must provide (under oath) the date it first started using the trademark in connection with products and/or services anywhere in the United States, and the date it first started using the trademark in connection with the products and/or services in commerce.

“Use in commerce” is defined as the bona fide use of a trademark in the ordinary course of interstate trade.  Note, intrastate (only within a state) commerce will not provide a basis for federal trademark registration.  If the trademark is used with goods or products, it will be deemed to be used in commerce when the trademark is placed on the goods, on the containers of the goods, displays associated with the goods, or on the tags or labels.  Regarding services, there must be use of the trademark in connection with the sale or advertising of the services in interstate commerce.  Offering services to businesses and individuals via the internet nationwide has been held to constitute use in commerce because the services are made available to potential consumers or clients across all states and US territories. Finally, the trademark applicant will be required to submit an appropriate specimen (or evidence) that shows how the trademark is actually being used in interstate commerce.

Important Note: Using the TM or SM symbol with the trademark for your product or service prior to the USPTO issuing an official trademark registration is an effective way to let consumers and competitors know you’re claiming exclusive rights in trademark. Although TM stands for “trademark” (promoting products) and SM stands for “service mark” (promoting services), many people simply use the TM symbol next to their mark regardless of whether the trademark is promoting products or services. Just remember you can only use the ® symbol after the USPTO officially issues your federal registration.

Step 1 – Conduct A Trademark Search and Clearance

Every business or individual anticipating the launch of any new product or service should plan for a comprehensive trademark search to determine whether the proposed trademark – business name, product or service name, slogan, tagline, logo or brand design – is available for use, registrable and protectable. Failure to conduct a comprehensive trademark search and clearance before using a trademark in the marketplace could result in many problems. The most severe of these problems is the possibility that the proposed trademark will infringe on an already existing trademark registration in the marketplace. Our trademark attorneys will conduct a comprehensive trademark search, which includes searching all 50 state trademark databases and the federal trademark database (and other trademark databases if necessary), to determine if the proposed trademark is available for use, registrable and protectable. Our law firm will turnaround most trademark searches within 3 business days.

Step 2 – Trademark Application Filed

After the trademark search and clearance is conducted and the results of the trademark search analyzed for any potential problems, the business or individual must decide whether to file an “actual use” or an “intent to use” trademark application.  Once the type of trademark application is determined, the business or individual must properly complete the federal trademark application.  The three most important elements of the trademark application will be: (1) who will own the trademark – an individual or partnership, limited liability company, or corporation?; (2) is the proposed trademark a “word mark,” “design mark,” or “word plus design mark?” (Note, the trademark could also be a “sound mark.”); and (3) an accurate description of the products and/or services in the appropriate international classification (or trademark class).  Once the trademark application is submitted to the USPTO, the trademark application will be assigned a serial number.  The applicant may check the status of its trademark application at any time throughout the registration process by using the assigned serial number. For Amazon online sellers, you may use the trademark application serial number to enroll in the Amazon Brand Registry program.

Step 3 – USPTO Reviews Trademark Application

After about 3 months (currently the wait time is over 6 months), the trademark application will be assigned to an examining attorney at the USPTO. The USPTO examining attorney will conduct a review of the trademark application to determine whether it meets all filing requirements.  If the trademark application meets all filing requirements, the USPTO examining attorney will then determine whether the proposed trademark may be registered under federal law.  If the trademark application is properly completed and the trademark may be registered under federal law, in about 6-8 weeks the USPTO examining attorney will then publish the proposed trademark in the Trademark Official Gazette – putting the world on notice of the trademark applicant’s intent to claim exclusive rights in the applied-for trademark.

(a) USPTO Publishes the Trademark in the Official Gazette

If the USPTO examining attorney does not find any grounds to reject or refuse the proposed trademark, and the trademark application satisfies all legal requirements, the proposed mark will then be published for 30 days in the Trademark Official Gazette.  There are two purposes for publishing the applied-for trademark in the Trademark Official Gazette.  First, it puts the world on notice of the trademark applicant’s intent to claim exclusive rights in the applied-for mark in connection with the specific products and/or services described in the trademark application.  Second, if any third party believes it will be damaged by the registration of the trademark, it will have 30 days from the date of publication to submit a formal opposition to the Trademark Trial and Appeal Board (TTAB) against the applied-for trademarks registration. A trademark opposition is similar to a federal court proceeding, but is held before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who review and decide these matters. If a trademark opposition is filed within the time period allowed, no further action will be taken on the trademark application until the trademark opposition is resolved. As such, trademark oppositions could delay the trademark registration by several months.  If no trademark oppositions are filed, the USPTO examining attorney will then allow the trademark to register, which will likely take 3-6 months after the trademark is published in the Trademark Official Gazette.

(b) USPTO Issues An Office Action

If the USPTO examining attorney finds grounds to reject or refuse to register the applied-for trademark, he or she will issue an “Office Action.”  The Office Action rejecting or refusing the trademark will describe in detail why the trademark cannot be registered and will also provide citations to the law to support the refusal. To avoid abandonment of the trademark application, the trademark applicant must submit a formal response that overcomes each refusal and/or satisfies each requirement in the Office Action.  If the trademark applicant fails to respond to the office action within three (3) months, the trademark application will be automatically abandoned by the USPTO. The trademark applicant may request an additional three (3) month extension before the initial three (3) month response deadline expires.  If the application is abandoned, the applicant will have two (2) months from the time the USPTO rules the application abandoned to revive the application for an additional fee. If the trademark applicant properly responds to the Office Action in time, the examining attorney will then review applicant’s response to determine if all previous refusals or requirements have been overcome and satisfied.

After the trademark applicant submits a formal response to the Office Action, either (1) the examining attorney will agree with applicant’s response and approve and publish the trademark in the manner stated above, or (2) the USPTO examining attorney will issue a final refusal letter (Office Action #2). This Final Office Action means that trademark applicant’s response failed to overcome all the refusals or satisfy all requirements and makes final any remaining refusals and/or requirements. An applicant may respond to this Final Office Action by either (1) overcoming and complying with the remaining requirements in the letter, or (2) appeal to the Trademark Trial and Appeal Board (TTAB) by filing a timely Notice of Appeal. Either action by the trademark applicant must occur within three (3) months of the latest Office Action or the trademark application will be automatically abandoned by the USPTO.

Step 4 -USPTO Registers Trademarks and Issues Federal Trademark Certificate

Within 3-6 months after the applied-for trademark publishes in the Trademark Official Gazette (TOG), if no trademark oppositions are filed, the USPTO will officially register the applied-for trademark.  After the trademark registers and the USPTO issues the trademark owner the official federal trademark certificate, the trademark owner must periodically file trademark maintenance documents and pay fees at specific time periods in order to keep the trademark registration active and valid.

Trademark Registration Based on Intent to Use In Commerce

Trademark registrations based on an “intent to use” a trademark in commerce (Section 1(b)) applies when the applicant has not yet started to use the trademark in the marketplace.  The “intent to use” trademark application (ITU Application) is an excellent option for a business or individual seeking to secure its trademark prior to the launch of its product and/or service.  Under federal trademark law, a business or individual may file an intent to use trademark application if the business or individual has a bona fide intent to use the trademark on a product and/or service in the near future. The federal trademark registration will not be granted, however, until the business or individual files a verified statement, together with evidence, showing that the trademark is in use in commerce. It is fundamental to US trademark registration that “use in commerce” must precede registration.  Without use, there is no trademark to be recorded with the USPTO.

A business or individual may prove “use in commerce” by filing a Statement of Use after the USPTO examining attorney issues a Notice of Allowance. Once the Notice of Allowance is issued, the business or individual will have a maximum of 36 months from the date of the Notice of Allowance within which to file a Statement of Use. The Statement of Use must accompany evidence of use.  The “use” necessary is use in the “ordinary course of trade,” not just token use.  A 6-month period from the date of the Notice of Allowance is available to all federal trademark applicants. An additional 6-month period is only available upon request to the USPTO and payment of a fee together with a verified statement of continued bona fide intention to use the trademark in commerce. Thereafter, four additional 6-month extensions may be obtained upon a sufficient showing of “good cause,” together with a fee and a verified statement of continued bona fide intention to use the trademark in commerce.

Note, in certain circumstances, an “intent to use” (ITU) applicant who has made use of the trademark in commerce may amend its application to a “use based” application by filing an Amendment to Allege Use (AAU).  The Amendment to Allege Use may only be filed during the pre-approval-for-publication period.  This is an alternative to waiting for the USPTO to issue a Notice of Allowance.  The advantage to using an Amendment to Allege Use to prove use of the trademark in commerce rather than waiting for publication and the Notice of Allowance and then to file a Statement of Use is that the AAU procedure permits the trademark applicant who uses the trademark in commerce soon after applying to obtain its trademark registration quicker.

Step 1 – Conduct A Trademark Search and Clearance

Whether filing an “actual use” or an “intent to use” federal trademark application, every business or individual anticipating the launch of any new product or service should plan for a comprehensive trademark search to determine whether the proposed trademark – business name, product or service name, slogan, tagline, logo or brand design – is available for use, registrable and protectable. If a business or individual decides to skip the trademark search, it is more common than not that the business or individual will run into unexpected time consuming and costly problems during the trademark registration process. The trademark registration process is already lengthy without having to address unexpected problems. So, please save time and money and have our attorneys  conduct a trademark search and clearance before submitting any trademark application to the USPTO.  Our law firm will turnaround most trademark searches within 3 business days.

Step 2 – Trademark Application Filed

After a comprehensive trademark search and clearance has been conducted, the business or individual must decide whether to file an “actual use” or “intent to use” trademark application.  Once the type of trademark application is determined, the business or individual must prepare the trademark application.  The three most important considerations in completing the trademark application will be: (1) who will own the trademark – an individual or partnership, limited liability company, or corporation? (Note, make sure you clear the trademark that will be applied-for BEFORE organizing the business!); (2) is the proposed trademark a “word mark,” “design mark,” or “word plus design mark?” (Note, make sure the design is final – no material changes can be made to the design once the trademark application has been submitted to the USPTO!); and (3) an accurate description of the products and/or services in the appropriate trademark classification. Once the trademark application is submitted to the USPTO, it will be assigned a serial number. The applicant may check the status of its trademark application at any time throughout the registration process by using the assigned serial number.  For Amazon online sellers, you may use the trademark application serial number to enroll in the Amazon Brand Registry program.

Step 3 – USPTO Reviews Trademark Application

After about 3-6 months from the date the trademark application is submitted, the USPTO will be assign an examining attorney to review and (hopefully) preliminarily approve the trademark application. The examining attorney will conduct a review of the application to determine whether federal trademark law will permit the trademark to be registered and whether all legal requirements were satisfied in the trademark application. After the examining attorney’s review of the trademark application, within 6-8 weeks, one of the following two scenarios will occur:

(a) USPTO Publishes the Trademark In The Trademark Official Gazette

If the USPTO examining attorney finds no grounds to reject or refuse the applied-for trademark, the applied-for trademark will then be published in the Trademark Official Gazette. The trademark publication provides notice to the public that the trademark applicant intends to claim exclusive rights in the trademark and the USPTO intends to issue a registration for the trademark. The trademark will be published in the Trademark Official Gazette for a 30 day opposition period. During this 30 day period, any third party that believes it may be damaged by the registration of the trademark will have the opportunity to oppose its registration.  If a third party decides to oppose the registration, it must file a formal trademark opposition with the Trademark Trial and Appeal Board (TTAB) stating that their business, product and/or service would be harmed by the registration of applicant’s trademark. If this occurs, no further action will be taken on the trademark application until the trademark opposition is resolved. If no oppositions are filed, or if the opposition is finally resolved, the USPTO will then issue a Notice of Allowance to applicant allowing it to submit evidence showing the trademark in use in commerce.

(b) USPTO Issues Office Action

If the USPTO examining attorney finds grounds to reject or refuse to register the applied-for trademark, he or she will issue an “Office Action.” The Office Action rejecting or refusing the trademark will describe in detail why the trademark cannot be registered and will also provide citations to the law to support the refusal. To avoid abandonment of the trademark application, the trademark applicant must submit a formal response that overcomes each refusal and/or satisfies each requirement in the Office Action. If the trademark applicant fails to respond to the office action within three (3) months, the trademark application will be automatically abandoned by the USPTO. If the application is abandoned, the applicant will have 2 months from the time the USPTO rules the application abandoned to revive the application for an additional fee. If the trademark applicant properly responds to the Office Action in time, the examining attorney will then review applicant’s response to determine if all previous refusals or requirements have been overcome and satisfied.

After the trademark applicant submits a formal response to the Office Action, either (1) the examining attorney will agree with applicant’s response and approve and publish the trademark in the manner stated above, or (2) the USPTO examining attorney will issue a final refusal letter (Office Action #2). This Final Office Action means that trademark applicant’s response failed to overcome all the refusals or satisfy all requirements and makes final any remaining refusals and/or requirements. An applicant may respond to this Final Office Action by either (1) overcoming and complying with the remaining requirements in the letter, or (2) appeal to the Trademark Trial and Appeal Board (TTAB) by filing a timely Notice of Appeal. Either action by the trademark applicant must occur within thee (3) months of the latest Office Action or the trademark application will be automatically abandoned by the USPTO.

Step 4 – Notification of Allowance Issued

Between 2-4 months after the applied-for trademark has been published in the Trademark Official Gazette (TOG), a Notification of Allowance (NOA) will be issued by the USPTO examining attorney. Note, the NOA is not the same as a registration of the trademark.  A Notice of Allowance indicates that the trademark has been published in the Trademark Official Gazette and there was no successful opposition of the trademark.  The Notice of Allowance is a key document because its issue date establishes the due date for filing a Statement of Use. A Statement of Use must be filed within 6 months of the date the Notice of Allowance was issued, otherwise, the application will be abandoned.

The Statement of Use requires the trademark applicant to submit a verified statement that the applicant is indeed the owner of the trademark, that the applicant has used the trademark in commerce, and the date of first use of the trademark anywhere and the first use of the trademark in commerce in connection with all of the goods and/or services described in the trademark application.  The Statement of Use (SOU) must include a specimen of the trademark as actually used in connection with the products and/or services described in the trademark application ad the required fee.

Step 5 – Review of the Statement of Use

Once a Statement of Use (SOU) has been timely filed, it is forwarded to the USPTO examining attorney for examination.  If the Statement of Use meets the requirements for acceptance, the trademark applicant will be notified and the official trademark certificate will be issued.  However, if the examining attorney determines that the specimens submitted fail to show use in commerce or fail to indicate the source of the goods and/or services, he or she will issue a refusal.  It is not uncommon for the examining attorney to issue a refusal because the specimens submitted fail to indicate the source of the goods and/or services.  For example, the most common refusal is on the basis of ornamentation.  Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s good and, thus, does not function as a trademark.  Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.  Thus, it is important that the appropriate specimens are submitted with the Statement of Use to avoid any unexpected Office Action Refusals.

Specimens Proving The Trademark Is In Use in Commerce

In 2019 the USPTO created a new policy to refuse false specimens (or evidence) that have been digitally created or altered.  These kind of fake specimens were created by applicants to support a trademark registration by deceptively evidencing that a trademark was actually used on products and/or services described in the trademark application.  Therefore, if the USPTO examining attorney believes that the specimen is fake or digitally altered, a refusal to register the trademark will be issued with a request for detailed information about the products and/or services and the specimen submitted.

Additionally, purchasing goods and services on the internet through online retail platforms like Amazon, Ebay, Walmart and Etsy has become the 21st century equivalent to walking down the aisle of a brick and mortar store.  A trademark applicant taking a screenshot of a web page showing the point-of-sale is appropriate to use a specimen showing use in commerce.

Step 6 -USPTO Registers Trademarks and Issues Federal Trademark Certificate

Within 3-6 months after the applied-for trademark publishes in the Trademark Official Gazette, if no trademark oppositions are filed, the USPTO will officially register the trademark.  After the trademark registers, the USPTO will then issue the trademark owner an official federal trademark certificate.  The office certificate of registration recites that the trademark applicant has complied with the law and is entitled to registration of the trademark on the Principal or Supplemental Register.  The trademark certificate issued by the USPTO states the date of the application, the date of issue, and the registration number.  After receipt of the federal trademark certificate, the trademark owner is entitled to use the statutory federal trademark registration notice (R) or its equivalents with the trademark.

After the trademark registers, the trademark owner must periodically file trademark maintenance documents and fees within specific time periods in order to keep the trademark registration active and valid.