What Is the Trademark Registration Process?

Applying for federal trademark registration is typically a wise investment for individuals and businesses. The benefits that come with registration, including nationwide exclusivity to use your mark in connection with your goods or services, can be extremely valuable. But, the trademark registration process can be confusing. This post explains the trademark registration process for applications submitted on a Section 1(a) use in commerce basis.

The Trademark Registration Process

Step 1: Trademark Clearance

It is wise for anyone considering trademark registration to obtain a formal clearance opinion regarding any risks associated with a proposed trademark application. Applying for trademark registration puts the world on notice of your claimed rights in a mark. As a result, it is important to understand whether you are infringing on any existing marks before filing the application.

Step 2: Completing the Application

The application itself is rather straightforward are requires the applicant to identify the trademark owner, address, mark, description of goods and services, date of use in commerce, and a sworn statement as to the applicant’s exclusive rights to the mark. The applicant is also required to pay the filing fee, which varies depending on the specific application.

Step 3: Office Actions

Once the application is submitted to the United States Patent and Trademark Office, it will be assigned to an examining attorney. The examining attorney will review the application and test it against procedural and substantive trademark law. If the examining attorney finds any reasons not to register the mark, he or she will issue an Office Action.

Applicants are required to respond to the Office Action within 6 months of its issuance. If Applicant is able to correct the errors noted by the examining attorney, the mark will proceed to the next step. If the examining attorney upholds the office action, the mark will not proceed to registration unless the applicant appeals the examining attorney’s decision to the TTAB.

Step 4: Opposition Period

Once the mark clears the examining attorney’s review, it is published for opposition in the Trademark Official Gazette (TMOG) for a period of 30-days. During this period, any third party that believes it will be injured by the registration of the applied for mark may file a Notice of Opposition in the TTAB. If a Notice of Opposition is filed, the trademark application is suspended pending the opposition proceeding.

If an opposition is not filed within the 30-day period, the mark proceeds to the next step.

Step 5: Certificate of Registration

After conclusion of the opposition period, the mark will proceed to final registration. In approximately 12 weeks after the opposition period, the mark will be registered.

If you have questions about the trademark registration process, or about a pending trademark opposition or cancellation, contact Revision Legal’s experienced trademark attorneys though the forms on this page or by calling 855-473-8474.

Editor’s note: this post was originally published in March, 2015. It has been updated for clarity and comprehensiveness.

Intent-to-Use Applications: Filing Before Commercial Use

The registration process described above applies to marks already in use in commerce. But federal trademark law also provides a parallel track for marks not yet in use. Under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), an applicant with a bona fide intent to use a mark in commerce may file an intent-to-use (ITU) application. This allows businesses to lock in a priority date—the filing date—before the mark is commercially launched.

An ITU application follows the same examination and opposition steps as a use-based application. However, after surviving examination and any opposition period, the applicant receives a Notice of Allowance rather than immediate registration. The applicant then has six months from the Notice of Allowance to either (a) file a Statement of Use demonstrating actual use in commerce, or (b) file a Request for Extension of Time. Extensions of six months each are available upon a showing of good cause for up to three years from the Notice of Allowance. Once a Statement of Use is accepted, the USPTO issues the Certificate of Registration.

Identification of Goods and Services: Getting It Right the First Time

One of the most consequential decisions in the trademark registration process is how to identify the goods or services in the application. The USPTO uses an international classification system with 45 classes—34 for goods and 11 for services—established by the Nice Agreement. Each class requires a separate filing fee, currently $350 per class for TEAS Plus applications and $650 per class for TEAS Standard applications.

The identification of goods and services must be sufficiently definite to allow the examining attorney to determine the nature of the goods and whether a likelihood of confusion exists with registered marks. Overly broad identifications—such as “clothing” rather than “t-shirts, hats, and jackets”—will draw an office action requiring amendment. Overly narrow identifications, on the other hand, may limit the scope of protection available. Getting the identification right at the outset reduces the likelihood of substantive office actions and ensures that the registered mark covers the full scope of the applicant’s commercial use.

Post-Registration Maintenance Requirements

Federal trademark registration does not last forever without maintenance. Registrants must comply with ongoing filing requirements to keep their registrations alive:

• Section 8 Declaration (15 U.S.C. § 1058): Between the fifth and sixth year after registration (and within each successive ten-year period thereafter), the registrant must file a declaration of continued use showing that the mark is still in use in commerce in connection with all goods and services listed in the registration. Failure to file results in cancellation.
• Section 15 Affidavit (15 U.S.C. § 1065): After five years of continuous use following registration, the registrant may file an affidavit of incontestability. Incontestability strengthens the registration by limiting the grounds on which it can be challenged or cancelled.
• Section 9 Renewal (15 U.S.C. § 1059): Every ten years, the registrant must renew the registration. The renewal must be filed within the one-year window before the expiration date (or within the six-month grace period following expiration, with a surcharge).

The Principal Register vs. the Supplemental Register

Not all marks qualify for the USPTO’s Principal Register. Marks that are merely descriptive or primarily merely a surname—but not generic—may be eligible for placement on the Supplemental Register. Registration on the Supplemental Register does not carry the same legal presumptions as Principal Register registration: it does not constitute constructive notice to the public, does not create a presumption of ownership, and cannot achieve incontestability. However, it does provide some benefits: the registrant may use the ® symbol, the registration serves as a bar to registration of confusingly similar marks, and it may form the basis for registration in foreign countries.

Marks on the Supplemental Register may migrate to the Principal Register once they acquire distinctiveness through long and continuous use. Five years of substantially exclusive and continuous use creates a presumption of acquired distinctiveness under Section 2(f) of the Lanham Act.

Whether you are starting the registration process for the first time or need to respond to a complex office action, Revision Legal’s trademark attorneys can guide you through every step. Contact us through the forms on this page or call 855-473-8474.

Common Reasons Applications Fail and How to Avoid Them

Many trademark applications fail not because the mark is inherently unregistrable, but because of avoidable errors in the application itself. The most common problems include an overly broad identification of goods and services that draws a descriptiveness or likelihood-of-confusion refusal; failure to conduct adequate pre-filing clearance that would have identified a conflicting registered mark; and filing on a use-in-commerce basis with a specimen of use that does not demonstrate the mark actually functioning as a trademark—for example, a product label that shows the mark being used as decoration rather than as a source identifier.

Another common failure is the use-in-commerce declaration itself. The applicant must declare under oath that the mark is in use in commerce in connection with all goods and services listed in the application. If the mark is not actually in use with every listed item on the date of the declaration, the application is vulnerable to a fraud claim in a future cancellation proceeding. Applicants should carefully audit their actual commercial use before filing a use-in-commerce application and amend the identification to match actual use if needed. Revision Legal’s trademark attorneys review applications for these issues before filing to minimize the risk of office actions and future challenges.