You've started your business and found the perfect logo and slogan to capture your brand’s identity and personality! At some point, you'll want to protect your brand by properly registering a trademark and staking claim to its ownership as used in commerce. You want your intellectual property to be properly safeguarded from infringers and counterfeiters. The process at first glance may seem esoteric. Partly, that's because it is. As you'll see below, only someone familiar with trademark law can adequately accomplish certain steps below. Nonetheless, there’s a predictable step-by-step path that when followed correctly, can help ensure a smooth and successful registration.
In this guide, we’ll lay out the steps for registering your trademark with the United States Patent & Trademark Office (USPTO) from start to finish. Having some familiarity with these steps will make for a smoother registration process!
Step 1: Conducting a Trademark Clearance Search
Trademarks exist to prevent consumer confusion in the marketplace. Before filing your trademark application, it’s critical to ensure your trademark is available and not confusingly similar to another registered mark. If your search turns up legal challenges to your application, it may not be worth the time or money to continue.
The first step is to do a trademark clearance search, also known as "knockout" search. This is primarily done through the Trademark Search (TM) database system at the USPTO website (which used to be called TESS (Trademark Electronic Search System) up until late 2023). If you plan to do business internationally now or in the future, your search should also include trademark databases at the World Intellectual Property Organization (WIPO), the European Intellectual Property Office (EUIPO), & any other relevant national databases.
While it seems like something you could do yourself, it’s better to hire a trademark attorney. A comprehensive search involves not just looking for exact matches, but also for variations that might be similar in sound, appearance, or even meaning – anything that might confuse a consumer and is in the same or a related class of goods and services. There are 45 different classes of goods and services, and proper classification is critical to proper protection. It's not as simple as just looking for identical matches.
An experienced trademark attorney can conduct advanced searches, spot legal issues, and analyze whether your mark is likely to face challenges. If an issue comes up that might defeat your application, that same attorney should be able to explain why and help analyze the merits of proceeding with your registration. Sometimes the best client advice is to drop the application or go through a rebrand. All of this is part of a proper clearance search process without which you might sink money and time into a dead end. If an attorney agrees your trademark is available and concerns with registration are non-existent or minimal, you can move on to Step 2.
Step 2: Preparing Your Trademark Application
Once your clearance search is over, it’s on to preparing your application. Any mistakes here can lead to delays or refusals from the USPTO. Thankfully, most can often be corrected. At this point you should have researched and gathered all the necessary information. This includes some variation of a clear description, a high-quality image, the selection of classes of services and goods, and proof of your first use in commerce (if applicable).
You’ll also want to carefully check your mark for any spelling or stylistic errors. The USPTO can be notoriously demanding and reject or hold up applications for simple errors like a missing apostrophe (Smiths Bakery v Smith’s Bakery), missing designations (Sunny Solutions v. Sunny Solutions LLC), capitalization inconsistencies (Betty’s Bitchin’ Blueberries v. Betty’s Bitchin’ blueberries) and so forth. Make sure to review your application carefully because small errors can slow down your application by weeks to months.
Step 3: Filing the Application with the USPTO
As of Jan 18, 2025, the USPTO adopted a new base fee of $350 an application for each class of service or goods. Each additional class is another $350 each. Previously, there were two types of applications (Standard & Plus), but the USPTO has consolidated that into a single fee and application format. They've also adopted a new online application website, which to date has been smoother than the pre-existing one.
You'll also have to choose to file under a Section 1(a) (use in commerce) application or under a Section 1(b) (intent to use) application. If it’s a 1(a) application, you’ll have to provide evidence of use, otherwise called a "specimen", as well as proof of your first date of use in commerce. For a 1(b) intent-to-use application, you’ll forego this and instead have 6 months to file a Statement of Use (SOU) along with a specimen. After you file, the USPTO will issue a filing receipt and application serial number that you’ll use to track and reference your application throughout the process. Your filing date is important. It signifies your priority date, which is the date that determines priority order for competing marks.
Step 4: The Examination Process
After filing, the USPTO will assign an examining attorney (EA) whose job it is to review and approve your application. The examining attorney’s job is to evaluate your application for likelihood of confusion with the other marks as well as any other barriers to registration common to general trademark law. There are a host of statutory rules prohibiting registration like whether the mark is generic or fails to meet use in commerce requirements. The examining attorney’s job is to review all of these issues and approve or deny the application. The process takes several months from the filing date since each examining attorney oversees a significant volume of trademark applications at any given time.
If there are any issues with the application, the examining attorney will issue an Office Action, which is a formal letter describing the issue and the steps to cure it. Almost anything can trigger an office action - similar marks, spelling errors, inaccurate descriptions, serious likelihood of confusion. You or your attorney of record should receive notice of the office action at which point you'll have 3 months to file a timely response (with one available 3 month extension). Your response might require additional information, revisions, or a written argument about why the examining attorney should reconsider your application. If you fail to respond at all, the USPTO will consider your application abandoned and you’ll forfeit all fees and maybe even more importantly, your priority date. At this point, you'll need to refile a new application for the abandoned mark.
If you've properly addressed any office actions or there were no issues with your application, your application will be published for opposition.
Step 5: Publication for Opposition
Publication is a practice of putting the public on notice that the USPTO intends to award you a successful registration. The USPTO publishes this notice in its Official Gazette, a weekly online publication made available on their website. The publication opens a 30-day opposition window in which anyone who might object to your mark (usually a competing mark owner) can file an opposition with the Trademark Trial and Appeal Board (TTAB).
The publication period is an important step in the process as it’s the first available time that another mark holder can formally oppose your registration. Before that, the other mark holder must wait until the USPTO publishes your mark in the Official Gazette, even if they become aware of it prior. The USPTO makes opposers wait since there's the chance that a given mark will be rejected before it reaches the 30 day opposition window.
If an opposition is filed against your mark, it begins a process that leads to formal litigation of the issue in front of the TTAB. You can alternatively seek to settle or negotiate a resolution with other party prior to a TTAB hearing.
Step 6: Your Trademark Registration Certificate
If your mark survives the 30-day publication window unopposed, the USPTO will directly issue you a registration certificate. This is unless you have filed a 1(b) Intent to Use application where you’d first have to file a Statement of Use (SOU) within 6 months.
Your Trademark Registration Certificate is the official recognition of a successful application! You have been granted the exclusive right to use your particular mark in connection with the goods and services under which you registered your application. If anyone infringes on your mark, you now have standing to claim that the mark legally belongs to you.
Also, you can begin using the ® symbol with your mark which indicates that your mark is officially registered with the USPTO. Before this, you should only be using the ™ symbol with your mark, which indicates that you make claim to the mark through use in commerce but don't yet have an official registration with the USPTO. You can actually begin using the ™ symbol as soon as you start using the mark with your business.
As for your certificate, you don’t lose any rights if you lose your certificate, but it does serve as legal recognition of your trademark registration. Your legal rights are vested with the recordation of the registration at the USPTO. Still, many people choose to keep or frame their registration certificate as proof of ownership.
Step 7: Maintaining and Renewing Your Trademark
Owning a trademark requires continued maintenance. To maintain the trademark, you must continue using it in commerce. The USPTO requires that you periodically prove continued use in commerce. Your first required filing is a Section 8 Declaration of Use (referring to Section 8 of Trademark Manual of Examining Procedure or TMEP). This needs to be filed between the 5th and 6th year after registration along with a fee ($225 per class) and a re-submission of your specimen. The USPTO wants continued proof that you're still using the mark in commerce, otherwise the law would prefer the mark stay available to other business owners. This prevents people from gobbling up trademarks or squatting on them without using them in commerce. Failure to make this Section 8 filing could mean a cancellation of your registration.
At the 10th year after registration, you’ll need to file another Section 8 Declaration of Use as well as a Section 9 Renewal with corresponding fees. Section 9 Renewal fees are $525 per class. The fee for this renewal however will cover the next ten years of trademark protection. After that, you'll file Section 9 Renewals (with fee) every 10 years for as long as you intend to use the mark. There are two required filings in the first ten years and then one every ten years after.
You’ll also want to take note that any serious changes to your mark whether textual or visual will require a separate registration. Many people want to alter or redesign their marks every few years, sort of like baseball teams do, but remember doing results in a new mark that’s not protected under the same registration. So long as you continue using previous marks, you can continue to use them, but you'll also want to apply for a new registration for any new marks you bring into commerce.
Step 8: Protecting or Enforcing Your Trademark
After registering your trademark, you bear the responsibility to monitor and protect it from unauthorized use. The USPTO does not offer trademark policing, so it’s something you’ll need to do independently. A competing trademark that causes a likelihood of confusion or dilutes your brand will go unnoticed if you’re not actively policing. Many attorneys or law firms can help monitor your trademark portfolios often time using online services like Markify, Corsearch, & Trademarkia to help police their marks. You can do your own manual searches to spot obvious infringers, but you don't want to skip on using help via an attorney or trademark policing service because analyzing trademarks is a specialized skill.
Remember the opposition period of 30 days? Any good trademark policing should also involve continuous check-ins with the Official Gazette for new recently published, competing marks.
For well-known brands, active policing is an important part of owning trademarks. Popular fashion, handbag, and celebrity trademarks are infringed upon for profit all the time. These brands actively monitor for infringement to catch and stop infringers as early as possible.
Even smaller businesses will find their marks being infringed upon or piggybacked. If you do find someone infringing upon your mark, you can have an attorney file a cease and desist letter demanding they stop and threatening legal action against the infringer. If that fails to stop them, you would then consider your next legal steps including filing a trademark infringement suit, recovering damages, and penalizing the infringer through punitive fees.
Conclusion
This step-by-step guide to trademark registrations should give you a better understanding of the process from start to finish. You probably noticed that it’s fairly straightforward but there are also several hurdles throughout the process. If you’re at the point where you’re considering filing a registration, it is generally advisable that you sit down to discuss your likelihood of a successful registration with an experienced trademark attorney prior to beginning the process.
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