How to Register a Trademark: What to Expect From Start to Finish in 8 Steps!

You've started your business and found the perfect logo and slogan to capture your brand’s identity and the personality of your business.  You now want to protect your brand by properly registering a trademark and staking a professional claim to your brand identity.  You want your intellectual property to be properly safeguarded and know a registered trademark is designed to do just that.  The process at first glance seems esoteric, but like so many registrations and legal processes, there’s a predictable step-by-step path that, when followed correctly, can help ensure a smooth and successful outcome.  In this post, we’ll lay out the steps for registering your trademark with the United State Patent & Trademark Office (USPTO) from start to finish.  Having some familiarity with these steps will make for a better registration process especially when you’re working with an attorney.

Step 1: Conducting a Trademark Clearance Search

Trademarks are about eliminating 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 continuing. 

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 advisable 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 just not as simple as just looking for identical matches.

A trademark attorney can also perform advanced searches and spot issues that those unfamiliar with trademark law would not.  If an issue comes up that might defeat your application, a trademark attorney can explain why and help analyze the merits of proceeding with your registration.  Sometimes the best advice to a client is to consider dropping the application or going 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 that any concerns with registration are 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, but thankfully can often be corrected.  At this point you should have all the necessary information researched and gathered.  A clear description and/or high-quality image file of your mark, the selection of classes of services and goods you’ll apply for, 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 or months.

Step 3: Filing the Application with the USPTO

The USPTO offers two different filing options through its Trademark Electronic Application System (TEAS), the TEAS Plus and the TEAS Standard applications.

TEAS Plus is the more affordable option, with lower filing fees ($250 per class), but requires stricter adherence to the USPTO’s guidelines and use of the Trademark ID Manual which has pre-written descriptions of goods and services and offers minimal customization.  If none of the ID Manual’s descriptions accurately describe your good or service, then you’ll need to file a TEAS Standard application ($350 per class) where you can customize your own description of your good or service.  Why is it important to submit an accurate description?  You guessed it! If it’s not accurate, the USPTO will issue a refusal that you’ll have to correct with a re-submission. The USPTO does not refund application fees either so if you get it wrong, you'll owe the fee(s) again.

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 (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 from your 1(b) application date (although extensions are allowed). 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 as it becomes your priority date which is the date that decides which of two competing marks has priority over the other.

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 (remember the clearance search?) as well as any other barriers to registration germane 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 ultimately approve or deny the application.  The process take several months from the filing date since each examining attorney oversees a 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 a problematic issue and what steps you must take to cure it.  Almost anything can trigger an office action including everything mentioned above like similar marks, spelling errors, inaccurate descriptions, as well as more serious likelihood of confusion issues.  You or your attorney of record will receive notice of the office action and will 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 as well as your priority date.  At this point, you'd need to refile a new application for the abandoned mark.

If the examining attorney finds no issues with your application or that you've properly addressed any issued office actions, your application will then 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 which is a weekly online publication made available on their website.  The publication opens a 30 day opposition window in which anyone who might have an objection to your mark (usually because of a competing mark) 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 because there’s always the chance that a given mark will get rejected before it reaches the 30 day opposition window.

If an opposition is filed against your mark, it begins a process that leads to the formal litigation of the issue in front of the TTAB.  You can alternatively seek to settle or negotiate a resolution with other party before 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 can do your happy dance at this point. You have been granted the exclusive right to use your particular mark in connection with the goods and services under which 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 yet don't have an official registration with the USPTO. You can actually begin using the ™ symbol as soon as you start using your 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. 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 the Section 8 of Trademark Manual of Examining Procedure or TMEP) of between the 5th and 6th year after registration along with fees ($225 per class) and a re-submission of your specimen.  Again, this is to show that you are still using the mark in commerce, otherwise the law would prefer the mark were available to other business owners. This prevents people from gobbling up trademarks and squatting on them without any use 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. After this tenth year filing, you’ll only need to file a Section 9 Renewal every 10 years for as long as you intend to use the trademark.  So that’s two filings in the first 10 years and then one filing every 10 years after. It's not much really, but at the same time, they're important filings to remember.

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 doing so will result in a new mark that’s not protected under the same registration.  It doesn’t mean you have to forfeit your previous marks, you can use multiple marks . It does mean though that you’ll have to file a new application for your redesign to be afforded the same trademark protection.

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 could go unnoticed indefinitely if you’re not actively policing.

Many businesses will hire an attorney or law firm to help monitor their trademark portfolios which often contain multiple marks.  Remember the opposition period of 30 days?  Your trademark policing will involve continuous check-ins with the Official Gazette for new competing marks published from active registrations. You'll also want to check in with common marketplaces and do thorough deep dives on the internet to catch infringers.

For well known brands, active policing is an important part of owning their trademarks.  Popular fashion, handbag, and celebrity trademarks are infringed upon for profit all the time.  These brands have learned over time to 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 can file a cease and desist letter threatening legal action against the infringer. If the cease and desist letter fails to stop them or they fail to acknowledge it, you would then consider the next legal steps including filing a trademark infringement suit to seek an injunction, recover damages, and potentially penalize 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 high hurdles throughout the process.  If you’re at the point where you’re considering filing a trademark registration, it is generally advised that you sit down to discuss your likelihood of a successful registration with an experienced trademark attorney prior to beginning this process.