What are the Steps to Apply for a US Trademark Registration?

Protecting your brand's identity is a critical step in building a lasting business, whether that business is a start-up or has been ongoing for several years. One of the most effective ways to safeguard your company's name, logo, slogan, or other unique identifiers is through seeking trademark registration for one or more of these elements of your brand.  Having a registered US Trademark sets a business apart from competitors, and provides many valuable benefits (such as eligibility for the Amazon Brand Registry).   The United States Patent and Trademark Office (USPTO) manages the process for attaining a US Trademark registration for your business, but navigating it can be a daunting task for individuals and business owners unfamiliar with intellectual property law. While it is possible to "Do It Yourself" (DIY), and file your own application without a lawyer, most often that results in a denial, as the trademark process is very technical and particular, with various steps and deadlines.  This article simplifies the trademark application process, outlining each step to help you understand what's involved and how to approach it.

What is a Trademark and Why is it Important?

A trademark is any word, phrase, symbol, design, or a combination of these, that identifies and distinguishes the source of goods or services of one party from those of others.  We often say that it serves as a source identifier for goods and services.  Similar to a Copyright, a Trademark right comes into existence as soon as you start operating in commerce under a given name, logo, slogan or combination thereof.  That is called a Common Law Trademark.  Just like in Copyright, a common law trademark is very weak in terms of protection, and is difficult to enforce against others who try to use your trademark for their own business.  Registered Trademarks offer greater protection, and a trademark can be registered at either the state or federal levels.  Again, a state trademark offers less protection than a federal trademark registration.  A federal trademark registration will trump a State or common law trademark. 

(For More information on the benefits of a Federal trademark registration over a State trademark registration, see our other Blog Article on that topic! - https://www.iveticlaw.com/trademark-wars-federal-vs-state-registration-explained)

Trademarks matter because they:

• Protect your brand identity from replication or misuse
• Provide exclusive rights to use, license, or sell the mark
• Add credibility and value to your business
• Prevent customer confusion in the marketplace
• Provide eligibility for certain other things - such as the Amazon Brand Registry

(For More information on the basics of Trademarks, see our other Blog Article on that topic! - https://www.iveticlaw.com/what-are-trademarks-and-how-do-they-work)

Whether you're building a brand from scratch or expanding an existing business, registering your trademark ensures that your intellectual property rights are protected under federal law. Trademark registration is the name given to the legal process by which you seek protection for you brand/trademark (usually at the federal level).  Sometimes people will refer to that process as "Getting a Trademark," even though they actually mean getting your trademark registration. 

The Steps of the USPTO Trademark Application Process

Trademark registration with the USPTO involves several key steps. As previously indicated, though you can Do It Yourself (DIY), if you make a mistake or fail to respond to a USPTO communication within the strict timeframes required, you may get rejected and not attain a registration.  In fact, per USPTO statistics, it seems that DIY filers are unsuccessful in the vast majority of circumstances (ie. you have less than a 50-50 chance of being successful).  Below, we'll break them down in detail to help you prepare for the process.

1. Pick a Trademark that is Unique and Eligible for Protection

Before you can even think of beginning to seek a trademark registration, it is a good idea to spend time developing a really creative, unique/and distinctive trademark (whether it is a name, logo, slogan, or combination thereof).  All too often people will settle on a common or weak name, and then run into problems when they try to seek federal registration.  Two of the most common obstacles and problems encountered by DIY trademark filers are a) a conflict with a pre-existing trademark registration; and b) picking a name that is generic/descriptive and ineligible for trademark protection.

2. Conduct a Trademark Search

Before filing your application, it's essential to ensure that your desired trademark isn't already in use. This will help to avoid the first problem we have mentioned (ie. failing due to a conflict with a pre-existing trademark registration that is for a similar good/service).  From the perspective of US trademark law, a conflict does not have to be identical to your trademark to cause a refusal.  The USPTO and trademark law look at any trademark that is confusingly similar enough to your own so as to potentially cause confusion among consumers as to the source of that good/service. In that regard, phonetic equivalents, even if spelled different, will still act as a conflict.  The best way to ensure that you will not be refused for a conflict, is to conduct appropriate searches before filing to ascertain if anyone else has either registered for a similar mark before, OR tried to and failed.  (In case of the latter, the obstacles unsuccessfully overcome by the predecessor applicant might be a roadmap for your own process).

This step involves (at the very least) searching the USPTO's Trademark Search System for existing trademarks that may conflict with yours.  Note, this system was for years called "TESS," until that system was retired in 2023 (so you still may see resources refer to TESS, and the URL for TESS still redirects to the current Trademark Search System).

• Tip: Be thorough! Search for identical marks as well as similar ones in the same or related industries.
• Why it matters: Filing an application for a mark that's already registered or pending can lead to rejection, delaying your efforts and potentially wasting filing fees.

You will probably need to run several searches, and it helps to be familiar with the various codes and formulas for advanced searching - see https://tmsearch.uspto.gov/help 

 For professional guidance, consider consulting with a trademark attorney who can conduct a more in-depth clearance search and render a Clearance Opinion, utilizing a 3rd party vendor, and looking at not only US federal trademark registrations, but state registrations and common law trademark usage as well.  For more information on what an Attorney Clearance Opinion entails - take a look at our Blog Article on that topic! - https://www.iveticlaw.com/what-exactly-is-a-trademark-clearance-opinion-and-do-you-need-one

3. Prepare the USPTO Application

You can prepare and file a USPTO trademark application online!  But to do so, you will need to set up a verified USPTO account.  (a very pratical reason to emply the assistance of a trademark attorney, is the fact that they can file your application under their attorney account, and ensure it is done correctly)  The new Trademark Center at the USPTO is a much more user-friendly portal than the old TEAS forms were.  Since the new portal was only introduced in January 2025, you may still encounter resources talking about the old system (ie, "filing via TEAS Standard or TEAS Plus).

There are several things that you will need to identify in your USPTO Application. Here is a primer on what those are:

Who is the Owner of the Trademark?

It is important to know that the Owner should be whoever is actually using or going to use the trademark in commerce.  If your corporation or LLC will be using the trademark, they should be the owner (although it is possible for an individual to be the owner of a trademark if they license the use of that trademark to an entity). If the wrong owner or entity is listed in the Application, this can very often be a fatal flaw that will invalidate the application, forcing you to start over. 

If the Owner is an individual or company that is not domiciled in the United States, it is important to know that US law requires that you engage a US-licensed trademark attorney to represent you at every phase of the process.  If you fail to engage an attorney, you will get an Office Action refusal and be required to have an attorney enter on your behalf later.

The USPTO no longer accepts PO Boxes and virtual addresses as the "domicile" address of an Owner!  While you can still use PO Boxes and virtual addresses as the mailng address, you will need to provide a valid domicile address as part of the application process.

What are you Trying to Protect?

Most importantly, you will need to decide how your trademark will be presented. The USPTO allows three main formats:

• Standard Character Marks: Protect words, letters, or numbers without any specific design features (e.g., a company name in plain text).
• Design Marks: Protect logos or stylized branding elements.
• Sound Marks: Protect exclusive sounds associated with your brand (e.g., a jingle).

Choosing the right format ensures your trademark application aligns with how you intend to use the mark in commerce.  If you have a brand name AND a logo - that will require two seperate USPTO applications. 

Identify Your Goods and Services

Your application must specify the goods or services that are sought to be offered and/or protected under the trademark you are seeking registration for. The USPTO uses the International Classification of Goods and Services (also called the NICE classification system) to categorize them.  For more information on the Classes of a Trademark, please check out our Blog Article on that topic - https://www.iveticlaw.com/how-do-i-determine-the-classes-for-my-trademark

• Tip: Be precise when describing your goods or services. Overly broad descriptions can trigger requests for clarification or result in application denial.
• Example: Instead of listing "clothing," specify "men's and women's athletic apparel, namely, T-shirts and hoodies."

It is important to know that the USPTO will charge a filing fee (currently a $350 base fee per class) depending on the number and type of classes you select.  Another important tool to be aware of, is the ID MANUAL where the USPTO has a search catalog of what are "approved" categories of goods/services.  To access that ID MANUAL at the USPTO - https://idm-tmng.uspto.gov/id-master-list-public.html

Select a Filing Basis

The filing basis determines how and why you're registering your trademark. The common options are:

1. Use in Commerce Basis: If you're already using the trademark in business. (This is called "Already In Use")
2. Intent-to-Use Basis: If you haven't yet started using the trademark but plan to do so in the near future. (This is called "intent-to-use")
3. Foreign Trademark: You can also seek to register protection in the United States on the basis of a Trademark you have applied for or already registered in another country

If filing based on "intent-to-use," you'll need to submit additional documentation (called a Statement of Use) later, confirming that the trademark is active in commerce.  If you are filing on an "Already In Use" basis, you will need to (already with the application) provide a suitable proof that you are already using your trademark for the goods/services in the application (called a "specimen").  

For more information on filng an "intent-to-use" application - https://www.iveticlaw.com/can-you-get-a-trademark-if-it-is-not-yet-being-used-what-entrepreneurs-should-know-about-filing-an-intent-to-use-trademark-application

For more information on "Specimens" - https://www.iveticlaw.com/what-qualifies-as-a-trademark-specimen

Signed Declaration

You will also need to sign the application to affirm that the information is accurate.  It is important to understand that your signature is the equivalent of swearing or affirming under oath to the government.

5. Submit Your USPTO Application

You'll complete the application through the USPTO's Trademark Center, and you can submit the form after it is signed.  At that time, you will be required to pay a fee (if your filing basis is "In Use").

Trademark filing fees vary depending on the number of classes your goods or services fall under, and will be at $350 per class for goods/services that fall under the ID Manual.  

Ensure you select the appropriate classification(s) and budget accordingly.

6. USPTO Review and Examination

After your USPTO application is filed, you will need to wait several months before it is assigned and examined by a USPTO Examiner Attorney.  Called the Examination Phase, an examining attorney from the USPTO reviews your application.  During this phase, the attorney will:

1. Verify that your mark complies with USPTO standards.
2. Check for potential conflicts with existing trademark registrations and/or pending trademark applications that were filed prior to yours.
3. Review your descriptions of goods or services.
3. Review your specimen (for an "Already In Use" application)

If there are issues, you'll receive an Office Action refusal detailing required corrections or objections. Applicants must respond to these actions within three months to avoid abandonment.

• Tip: Take Office Actions seriously. A well-drafted response often requires legal expertise, especially for complex refusals.

7. Publication and Registration

If your application clears the examination phase, the USPTO publishes your mark in the Trademark Official Gazette (TMOG). This allows any interested 3rd parties 30 days to file an opposition to your registration.

• If no oppositions are filed (or they're resolved), the USPTO proceeds with registration.
• Once approved, you'll receive one of the following:
  • Registration certificate (for “Already In Use” applications).
  • Notice of Allowance (for “intent-to-use” applications), requiring you to submit a Statement of Use.

Once you receive a Registration Certificate, your trademark is officially registered and enjoys full protection under federal law.  If you receive a Notice of Allowance, you must file a Statement of Use (and pay a filing fee) in order to demonstrate that you have started use of the trademark for the goods/services listed.  (this 6-month period can be extended by filing a request and extension fee).

8. Renewal and Maintenance

All too often (especially if filing DIY), you will get to the end of the above process, attain a Registration Certificate, and then think you are FINISHED/DONE.  Technically, you are, but that does not mean you no longer have to do anything else to keep your registration and protection.  Specifically, an often overlooked step in the process is the ongoing requirement to file renewal and maintenance declarations.  Your trademark registration can extend for a very long time, so long as you continue to use the trademark in commerce for all the goods/services listed, AND you keep current and file all required trademark renewal and maintenance documents (and pay the corresponding filing fee) in a timely manner. 

Once your trademark is registered by the United States Patent and Trademark Office (USPTO), it is valid for an initial period of six years. Within this timeframe, you must file a Section 8 Declaration to prove that you are actively still using the trademark in commerce for each of the goods/services that are listed on your registration certificate.  If you fail to file an appropriate Section 8 Declaration and a statement of use with a specimen, your registration will expire.  The Section 8 Declaration must be filed within the 5th and 6th year of registration, or at the latest, before the expiration of the grace period (which is 6-months long).  If you fail to file your Section 8 Declaration within that time period, your registration is cancelled, and you lose its protection!  You will need to pay filing fees to the USPTO as well as provide a Statement of Use and specimens, along with your Section 8 Declaration. If you file within the grace period, there is an additional fee assessed as a filing fee (think of it as a "penalty").

The next required trademark renewal/maintenance filing is between the 9th and 10th years after your registration.  These forms will be a Section 8 Declaration, a Section 9 Declaration (and again that must be accompanied with specimens proving that you are still using the trademark for the stated goods/services in commerce, as well as payment of the appropriate fee).  Again, there is an automatic 6-month grace period to file, and there is a per-class filing fee (increased if you file within the grace period). 

You will also need to file again every 10 years thereafter.  These forms will be a Section 8 Declaration, a Section 9 Declaration (and again that must be accompanied with specimens proving that you are still using the trademark for the stated goods/services in commerce).  Again, there is an automatic 6-month grace period to file, and there is a per-class filing fee (increased if you file within the grace period). 

For more information on Trademark Renewal and Maintenance Filings to keep your valuable trademark registration, see our more extensive Blog Article on the topic - https://www.iveticlaw.com/if-i-register-a-trademark-do-i-own-it-forever

Common Pitfalls to Avoid When Applying

Filing a trademark application can be complex, and mistakes are common. Avoid these pitfalls to improve your chances of success:

1. Skipping the Clearance Search: Failing to check for conflicts can lead to unnecessary rejection.
2. Using an overly Broad Description of Goods/Services: Be clear and detailed about your goods and services.
3. Missing Deadlines: Failing to respond to Office Actions or submit required documents on time to effect a renewal of your trademark registration can result in application abandonment or cancellation of your registration.
4. Rejected Specimens: Make sure the trademark as it appears on your specimen matches what you have applied for, and make sure the specimen is appropriate/valid for the good/service being sought for protection
5. DIY Errors: Even small mistakes can derail your trademark application, so working with an attorney is often worth the investment. (an Attorney led USPTO trademark application has a higher success rate than a DIY applicaion)

Why Consult a Trademark Attorney?

While the USPTO trademark application process is designed for public use, it's filled with technicalities that can be overwhelming for first-time applicants. A trademark attorney can:

• Conduct a Clearance Opinion on the prospects of a successful Registration Process.
• Prepare and submit your application professionally.
• Respond to Office Actions effectively.
• Keep track of deadlines and ensure compliance.

Take the First Step Toward Protecting Your Brand

Safeguard your brand and business by securing a federally registered trademark. Whether you're just starting the process or need help overcoming hurdles, our law firm has the years of knowledge and experience assisting clients with every aspect of the USPTO trademark registration process.  We can use our knowledge and experience to guide you through every step and maximize the prospects of a successful registration. Contact us today to schedule a consultation and ensure your intellectual property is fully protected.