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If you want to register a trademark without hiring an experienced trademark attorney, probably the most efficient method is to use an internet company to file your application. The cost is not too much, and you do not have to learn how to prepare and file the application yourself. Here at Revision Legal, we do not recommend using such companies, but your application and registration might turn out fine.
On the other hand, if you want to prepare and file your own application with the US Trademark Office, here is a brief explanation of the process. For this article, we will assume that you have already created your proposed trademark, that it meets the legal requirements for registration, and is not barred from being registered for any reasons set out in the Trademark Act or in judicial precedents.
The first step is to conduct a trademark clearance search. New trademarks cannot be the same as or confusingly similar to an existing trademark. So, you must conduct a search to clear that hurdle. This involves searching databases that contain existing, discontinued, and other trademarks. This includes all databases maintained at the state and federal levels. An internet search should also be conducted, and other searches if you want the most comprehensive search.
The next step is to prepare the application. Applications to register a trademark with the Federal Trademark Office are prepared and filed electronically through what is called the Trademark Electronic Application System (TEAS). You have four options in terms of the basis for your application. Most applicants are filing on the basis of either the first or second.
Depending on your filing basis, certain parts of the application will be filled out and other parts left blank.
The first part of the application is for information about the applicant. That section is mostly self-explanatory. The next section asks for information about your proposed trademark. With standard word/letter trademarks, you essentially type out the trademark. However, if there is a design or color aspect to the trademark, then a photo will need to be uploaded.
Next, you must select the class — and subclass — of the goods and/or services with which your proposed trademark will be associated. Every trademark is used with some product or service that is sold in interstate commerce. The trademark is only registered with respect to that class — or those classes — of goods or services.
If your trademark application is based on a currently-being-used trademark, then the most important part of your application is providing “specimens of use” that establish that the trademark has been and is being used in commerce AND the date on which use began. Both are important. Usually, these specimens of use are photos or other documents uploaded as PDF files.
To complete the application, the various filing fees must be paid, and the application must be signed by the applicant.
It is important to be vigilant with your application. If there are questions or additional information is needed, you will be contacted and must respond in a timely manner.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
Filing a trademark application with the USPTO is the beginning of a legal process, not the end. Applicants who approach registration as a simple form-filling exercise frequently encounter costly problems — abandoned applications, rejected registrations, or registered marks that do not actually protect their business as intended. Here is a more complete picture of what the process involves and the legal decisions that determine whether your registration delivers real protection.
Applications to register a trademark with the USPTO are filed electronically through the Trademark Electronic Application System (TEAS) at USPTO.gov. As of 2022, paper applications are no longer accepted. The TEAS system offers a single streamlined application form. As of February 2023 fee changes, the standard filing fee is $350 per class per mark for most applicants, with a reduced $250 fee available for applicants who meet specific requirements including use of pre-approved ID descriptions from the ID Manual.
The application requires the applicant to select a filing basis. Under 15 U.S.C. § 1051(a), an applicant who is already using the mark in commerce files on that basis and must provide a verified statement confirming use, the date of first use in commerce, and a specimen. Under 15 U.S.C. § 1051(b), an applicant who has a bona fide intention to use the mark in commerce files an intent-to-use application, which reserves the mark pending actual use. There are also bases for foreign applicants under 15 U.S.C. § 1126 (relying on a foreign application or registration).
The identification of goods and services in a trademark application defines the scope of legal protection the registered mark will provide. A trademark registered in Class 25 for “T-shirts” does not protect you from a competitor using the same mark on hats (also Class 25) or on software (Class 42). The identification must be specific enough to satisfy the USPTO’s requirements — vague identifications like “goods” or “services” are rejected — but must also be broad enough to actually cover your business.
The USPTO uses the Nice Classification system (an international treaty classification system) to organize goods and services into 45 classes. Many businesses use multiple classes. A software company, for example, might use its trademark in connection with downloadable software (Class 9), online services (Class 42), and printed manuals (Class 16). Failing to cover all relevant classes leaves the trademark under-protected from the start.
The identification must use specific, definite language. Acceptable: “downloadable mobile applications for tracking personal fitness data.” Not acceptable: “computer software.” The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) contains thousands of pre-approved descriptions that will pass examination. Applicants who draft custom descriptions risk Office Actions requiring amendment — delaying registration and increasing costs.
After filing, the application is assigned to a USPTO Examining Attorney who reviews it for compliance with the Trademark Act and USPTO rules. The examining attorney will search for existing registrations that might bar registration under 15 U.S.C. § 1052(d) (likelihood of confusion with a prior mark), examine whether the mark is merely descriptive of the goods or services under § 1052(e)(1), and check for other bars to registration including deceptive marks, scandalous or disparaging marks, geographic marks, and functional product features.
If the examining attorney finds issues, they issue an Office Action — a written response identifying the problems and requesting that the applicant respond within three months (extendable to six months for a fee). Failure to respond within the deadline results in abandonment of the application. Office Action responses require legal argument, supporting evidence, and sometimes amendments to the application. An inadequate or incomplete response can result in a Final Office Action — an official rejection — from which the applicant must either appeal to the Trademark Trial and Appeal Board (TTAB) or request reconsideration.
Once the examining attorney approves the application, it is published in the Official Gazette — a weekly USPTO publication — for a 30-day opposition period. Any party who believes they would be damaged by registration of the mark can file a Notice of Opposition with the TTAB within those 30 days (or request an extension of time to oppose). Oppositions are adversarial proceedings with discovery, briefing, and oral argument. They can delay registration by years and cost tens of thousands of dollars to defend.
If no opposition is filed, or if an opposition is resolved in the applicant’s favor, the mark proceeds to registration for use-based applications. For intent-to-use applications, a Notice of Allowance is issued, and the applicant must file a Statement of Use (with specimens) within six months — extendable in six-month increments up to three years total — before registration issues.
A federal trademark registration is not permanent without ongoing maintenance. Between years five and six after registration, the owner must file a Declaration of Use under 15 U.S.C. § 1058, confirming continued use with a specimen. Between years nine and ten, the owner must file a combined Declaration of Use and Application for Renewal under 15 U.S.C. § 1059. Renewals are required every ten years thereafter. Missing these deadlines results in cancellation of the registration. There are grace periods with additional fees, but failure to file within the grace period means the registration is canceled and the rights are lost.
The trademark attorneys at Revision Legal handle every stage of the registration process — clearance search, application filing, Office Action responses, opposition proceedings, and post-registration maintenance. Representation by experienced trademark counsel significantly improves approval rates and ensures that registrations cover the full scope of your business. Contact us to discuss your trademark registration needs.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
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