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So, you’ve decided to launch a brand name in the U.S. and are contemplating registering your mark with the U.S. Patent & Trademark Office (“USPTO”). What can you expect? Not every application is the same, so there will be variations in exactly what happens during the prosecution of your application, but hopefully this Article will serve as a “Trademark 101 Primer” to describe the basic process overall. If you have specific questions with which we might be able to help you, please contact any of us at the contact points identified at the end of this Article.

Basics

What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the products of one provider from those of others. A service mark performs the same function as a trademark, but applies to the single source of a service rather than of a product. (For simplicity, this Article refers to trademarks and service marks collectively as “trademarks” and uses the terms “product” and “good” interchangeably.)

How Valuable is a Good Trademark?

The value of a good trademark lies in its ability to convey to the public a single source of a particular good or service. The key is to develop a mark unique enough that your target audience associates this mark with your goods or services – and only your goods and services. While temptingly simple, choosing a mark that just describes your goods or services will not create any trademark value. Instead, when customers are confronted with merely descriptive terms, they wouldn’t understand those terms to refer only to your goods or services and won’t realize that these terms should be seen as distinguishing your goods or services from those of others in the same market or channel of trade.

Instead, you should select a mark that’s arbitrary, or otherwise very unique. You can even coin a new word or phrase as the new brand for your goods or services – even if that means that you need to spend some time and effort to educate your target audience about what this new term means. You should avoid choosing words with simple dictionary meanings, which you might be planning to use exactly as they are defined, because you risk selecting a plainly generic term, which can never develop any trademark meaning and which your competitors are free to use without infringing any exclusive rights you may believe exist.

Spending valuable (and perhaps limited) resources to try to associate those generic terms with your goods or services – including trying to enforce trademark rights against others who use those generic terms – would not provide any particular return on your investment, because it is “black letter” trademark law, that purely generic terms can never develop secondary meaning or serve as a source-identifying trademark.

Can Rights Develop Based on Use?

Federal registration is not a requirement before U.S. trademark rights can develop in a specific word, combination of words, logo, or other distinctive marking that is used consistently with your goods or services. Instead, rights in a particular trademark can be established simply by using that distinctive mark in U.S. commerce in connection with those goods or services – in other words, “use at common law” or reliance on “common law trademark rights.”

If you have the ability to seek a federal registration, however, completing the process successfully can help cement the scope and priority of your rights, and aid in your enforcement strategy if you discover a newcomer starting to use a confusingly similar mark as a trademark (after you have already commenced trademark use) without your permission in a way that is likely to confuse relevant consumers.

Federal registration can offer more comprehensive protection than reliance upon common law rights alone, including providing nationwide notice of your claim (as an owner) of exclusive use of the mark in connection with specific goods and/or services and some other valuable presumptions. But deciding whether to apply for federal registration may depend, in part, on how you plan to use your mark in commerce so that you can create an association in the mind of the public between your mark and your goods (or services) and how you would continue to maintain proof of such use for all applicable maintenance deadlines over the lifetime of your mark.

Trademark Application Process

Is Pre-Application Searching Required?

No, it’s not required, but it’s a good idea for a variety of reasons.1We plan to address trademarks clearance searches – and the benefits of undertaking those clearance searches before either adopting or using a mark in commerce, or filing an application seeking trademark registration – in a separate article. Some of those benefits are discussed here, but a more comprehensive discussion will be available in coming months. Among other reasons, the application filing fees charged by the USPTO are not refundable if your application is refused for any reason – whether because your mark is either merely descriptive or generic, or if a refusal is based on a likelihood of confusion with some other party’s exclusive rights in the same or similar mark for the same or similar goods, or if your mark is unable to function as a trademark for any reason.

Preliminary clearance searches can also identify when your desired term may be used so frequently in connection with the same or similar goods that you may have an uphill battle to develop a unique brand that consumers would recognize as being solely tied to you and your goods or services. Even if your adoption or use of this mark would not step on someone else’s toes, it’s possible that the term is seen as merely descriptive or generic in the context of the appropriate goods or channels of trade – and thus would be unable to function as a trademark. Consideration should be made, therefore, to whether it’s worth investing in – or continuing to invest in – the development of this mark if such exclusive rights would not be available.

Moreover, filing new applications can be a significant budget item for many companies and finding out more than six months after you file your application that another party claims exclusive rights in a confusingly-similar mark for similar or related goods might be very disruptive to your business operations. If you ultimately have to pivot to a new mark at that time, there is a possibility that you may have already invested significant funds into the advertising and marketing of your products or services under this mark, and would need to start over and make a similar investment to relaunch under a different brand.

More critically, if you are in the process of launching your new goods or services under this new mark, imagine the disruption that would occur if you were to receive a cease and desist letter that advises you about a third party’s claims to prior rights, their request that you make changes to your mark or how you plan to use it, their expressed intention to oppose your application, or their threat to file a federal infringement or unfair competition lawsuit if you continue to use this mark in connection with your specific goods or services. You may have some credible defenses to such a demand, but asserting those defenses or responding to discovery requests even in the early stages of litigation can be expensive and disruptive to the business.

The USPTO’s current processing times (see https://www.uspto.gov/dashboard/trademarks/) mean that it is unlikely that a USPTO Examining Attorney would be assigned to conduct the initial review of your application until approximately 6-8 months after you file – and thus you may not realize that the mark suffers from a critical infirmity without having conducted a pre-adoption or pre-application clearance search.

Overview of the Application Process.

Below is a chart that gives a broad overview both use-based and intent-to-use based applications filed under Section 1 of the Lanham Act (i.e., under 15 U.S.C. § 1051). This chart should provide a handy reference for the rest of this Article.

Components of the Initial Application for Registration

One of the first steps in applying for registration of a trademark or service mark is to identify how the mark is used (or how it is proposed to be used) in commerce, and what “classes” of goods or services should be included in that application.  An applicant may elect to apply for registration in all of the applicable classes in its first application, apply for each class individually, or apply for the core classes now and wait until later to file in other applicable classes. Each of the USPTO’s filing fees are calculated by class – not by the number of applications that you file, so deciding to file separate applications will not impact your USPTO filing fees unless you include the same classes in multiple applications. (The decision may impact how much the attorney or other professional fees will be to prepare the applications, depending on your circumstances.)

1. Determining Classes

The USPTO recognizes 45 potential classes of goods or services (see the USPTO’s discussion of Nice Classifications), each of which triggers a separate filing fee when included in an application (see Current Filing Fees). The USPTO’s new fee table (effective as of January 18, 2025) will include several surcharges that may apply if you elect to rely on a custom description of your goods or services to be covered in any application, but you can avoid those surcharges if you are able to use pre-approved identifications contained in the USPTO’s Trademark ID Manual.  This ID Manual is typically modified each January to include additional identifications that were adopted during regular negotiations among other trademark offices of Contracting States to the Nice Agreement. If pre-approved identifications do not work for your circumstances, you can submit a customized identification of goods or services – but these higher filing fees/surcharges will apply.

After you file your application, you may later clarify, narrow or limit the goods or services covered by the application in connection with that mark – but you cannot expand or broaden them. Accordingly, it is critical to consider (and work out with your attorney) the ways in which you already use the mark, or plan to use the mark, before filing the application so that you are not required to file a new application to cover expanded uses.

2. Drawing Page

Every application must include a clear drawing of the mark that you want to register. This drawing is used by the USPTO in its searching process and is required for printing the mark in the Official Gazette and on the registration certificate. The representation of the mark must, therefore, appear in the proper format for either a word mark (“standard character”) or a design mark (there are several variations, including the use of stylized text, illustrations and/or logos or other distinctive visual features, either together with words or alone).

If a particular design or style of lettering is embodied in the mark, the drawing must provide a substantially exact representation of the mark with sufficient quality to meet the USPTO’s requirements (see the USPTO’s discussion of the drawing of trademarks).  When it comes time to submit your specimen (or example) of use of the mark in commerce, you will be required to match your specimen to your drawing, or your specimen will be refused. It is difficult to amend a drawing of a mark – although it can be done under certain limited circumstances.

Color may also be a key feature of the mark.  If so, it can be claimed in the application and the specific colors (using their plain English names, not relying on any proprietary color-naming system) should be reflected in your description of your mark.  Note that claiming color requires you to match those colors in your specimens for each milestone filing. If you change your color scheme, you will likely to be required to file a new application to cover the amended mark and you might not be able to maintain the original registration, if you cannot show use of the mark in the original color scheme.

3. Specimen of Use

If you have already started using your mark in commerce in connection with the subject goods or services, the application is said to be based on “use.” In this context, “use” means “use in the ordinary course of trade” – not just a cursory use intended to reserve rights in a mark. If no such use has yet been made, but you have a bona fide intent to use the mark in connection with particular goods or services, the application would be an “intent to use” one.

For a use-based application, you must submit a specimen with the initial application that shows how the mark would be seen by customers in the marketplace. This is not the same as the drawing of the mark included on the drawing page. Picking the right specimen can be difficult at times. You should discuss potential specimens with your trademark attorney.  In preparation for that discussion, you can also review the USPTO’s guidance on this topic:  TMEP § 904 (Specimens, generally) and § 1301.04 (Specimens of Use for Service Marks); Trademark Basics; USPTO Guidance on Drawings and Specimens; and Dealing with Specimen Refusals).

Notably, the USPTO does not accept “digital mockups” as specimens, so the use of clean marketing photos of the applicable goods floating on a white background (such as what you might use as product images on your website) would not work as specimens. Instead, the USPTO prefers to see how the mark would be experienced by potential purchasers “in real life” – such that images showing the actual product bearing the mark sitting a table or store shelf along with other items would be preferred.

If the application is based on a bona fide intent to use the mark, no specimen is required with the initial application.  Instead, you would submit an Amendment to Allege Use or a Statement of Use after you start to use the mark to demonstrate actual use and to identify the “date of first use.” The USPTO charges an additional filing fee (Current Filing Fees) for either of these two filings. The current (significant) processing delays at the USPTO may also have an impact on the timing of certain filings, and whether it makes more sense to file early, or to wait after the Notice of Allowance issues.

USPTO Examining Attorney’s Review and “Office Actions”

After the USPTO receives your application, an Examining Attorney will review it on a substantive basis – to determine whether any corrections need to be made to the application before it proceeds to the next phase of prosecution. This initial review takes several months, and may require several interactions with the USPTO before this phase can be completed. (The USPTO publishes quarterly updates about its processing timeframes, which will impact how long it will take for an application to mature to registration.)

If the Examining Attorney identifies corrections that need to be made in an application for any reason, the Examining Attorney will issue a letter (“Office Action”) explaining any substantive reasons for refusal and any technical or procedural deficiencies in the application. If only minor corrections are required, the Examining Attorney may also contact you or your attorney by telephone or e-mail to seek authorization to issue an Examiner’s Amendment. If the Examining Attorney sends a formal Office Action, your response must be received by the USPTO within the deadline identified on the face of the Action.  (In some cases, there is a three-month deadline to respond, with an additional three-month extension available upon request and payment of a fee; in other cases, the deadline may be the full six-month period without any additional cost.)

Among other things the Examining Attorney will do during his or her initial analysis of an application is conduct a search of the USPTO database looking for existing registrations or prior pending applications that may block your application (i.e., resulting in a likelihood of confusion). This kind of conflict can result in a substantive refusal to register your mark. An Examining Attorney may also refuse registration if your mark is:

  • primarily merely descriptive of the goods or services;
  • deceptively misdescriptive of the goods or services;
  • primarily geographically descriptive;
  • primarily merely a surname; or
  • ornamental, or for other similar reasons.

It is impossible to predict accurately how an Examining Attorney will view each application, and opinions even among Examiners may differ widely, but, again, completing some version of a pre-application screening search in advance may give you a “heads up” about potential conflicts before you file.

Publication for Opposition

If the Examining Attorney raises no objections to registration, or if you have been able to overcome all objections, the Examining Attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO which is released on Tuesdays. (The live, and searchable, Official Gazette can be accessed here: https://eog-tmng.uspto.gov/). The USPTO will send a “Notice of Publication” to you (or your attorney) confirming the “publication date”. Any party who believes it may be damaged by registration of the mark has thirty days after the publication date to file either an Opposition to registration of your mark or a request for an extension of time to oppose. Further processing of your application can be delayed up to 180 days after the date of Publication if a potential opposer takes all available extensions to oppose your application (including the final 60-day extension either upon your consent or upon a showing of good cause).

If the mark is published based upon the actual use of the mark in commerce and no party files an opposition or requests to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate within a short period after the mark was published. It is not unusual for this entire application process to take between 2-3 years to complete before the Certificate of Registration is issued. (For more on the USPTO’s Current Processing Timelines, visit its pendency dashboard.)

If the mark is published based on an “intent to use” the mark, then the USPTO will issue a “Notice of Allowance”, following which you must identify the date on which your mark was first used anywhere, along with specimens of use of the mark in a “Statement of Use” within the initial six months (or during permitted extensions of time to file), demonstrating that use has occurred. Registration will issue in due course after the USPTO accepts your evidence of use as meeting its requirements.

Identifying the Mark as a Trademark

Anyone who claims exclusive rights in a mark may use the designations SM (in the case of a mark for services ) or TM (in the case of a mark for goods) following the mark to alert the public that the mark owner claims exclusive rights. It is not necessary to have a registration, or even a pending application, to use these designations, nor is using them required in order to create rights in the first place.

The registration symbol, ® , (also called a “Circle-R” symbol) may not be used until after the USPTO has issued a Certificate of Registration for the mark. Certainly, a Circle-R symbol should not appear next to the mark in the specimen that you submit to the USPTO with your initial application or Statement of Use, or the USPTO will reject it, given that at the time, registration had not yet issued.

In all cases, any mark for which you wish to develop source-identifying value should be used consistently in connection with all relevant goods or services so that the public can start to associate this mark with your goods and services as soon as possible.  Registrants should take special care to avoid allowing their marks to become fully “household words.”  While it might seem appealing at first blush to have a mark become a household word (in that this suggests the public has paid attention to your careful marketing and is now keenly familiar with your marks), such development can also result in converting a previously valuable mark into generic term that everyone is free to use to refer to any product or service of a particular type, regardless of where it comes from.

So How Much Will This Cost?

Attorney fees will differ from firm to firm, and may even differ from application to application because there are so many moving parts. It is therefore impossible to predict with any certainty how much an application will actually cost from start to finish, even if there are flat fees available for specific stages of the application process.

One component, the USPTO’s filing fees, can be budgeted ahead of time because the USPTO uses a published fee table. See Current Filing Fees – in effect until January 18, 2025, at which point, the most common fees will be as follows:

  • Initial Filing Fee to the USPTO –$350 per classof goods/services (filing electronically).
    • Note that there may be some additional surcharges assessed, depending on how you file the application – such as the fee to use a custom identification of goods or services – or if you use a very long custom identification of goods or services (exceeding 1,000 characters).
  • Statement of Use/Amendment to Allege Use – $150 per classof goods/services.
  • Request for Extension of Time to Allege Use – $125 per classof goods/services.
  • Request for Extension of Time to File Response to Office Action – $125 per request.
  • Section 8 or 71 Declarations of Continued Use, or Section 9 Renewal Applications – $325 per class of goods/services.

A comparison between the new (effective January 18, 2025) and the prior fees using the TEAS system can also be found in this Library, at https://www.nealmcdevitt.com/library/uspto-announces-new-filing-fees-to-take-effect-on-january-18-2025/, and, if you are really curious, a longer discussion appears here: https://privacyandiplawblog.com/2024/11/uspto-issues-final-rule-on-tm-fees-fy25/.

Maintaining a Registration

Also note that even after a registration issues, it must be maintained properly or it will be cancelled upon the next renewal deadline.  Registration may also be cancelled if the owner cannot prove continued use of the mark in commerce at any one of several key milestones in the lifecycle of a registration (such as in response to an expungement or reexamination proceeding under the Trademark Modernization Act, in which registrants will be asked to prove continued use at an off-schedule time in order to maintain the registration). Between the fifth and sixth year anniversaries of registration, declarations of continued use (with acceptable specimens proving continued use of the mark in interstate commerce and the applicable USPTO filing fee) must be filed. Likewise, renewal filings (with declarations, specimens and fees) are due between the ninth and tenth anniversaries, and every ten years thereafter.

Trademark registrations can be evergreen provided that they are properly maintained and provided that the underlying mark remains in use in commerce in connection with all of the registered goods or services. Even if the registration lapses, trademark owners may be able to retain some common law rights in the mark as long as they continue to use the mark consistently as a source-indicator in connection with specific goods or services within the geographic region in which use is maintained.

Other Sources of Information

The USPTO has a number of helpful resources to explain the basic trademark process and to answer basic questions – intended for business owners and members of the public. Some examples:

  • Trademark Basics: includes links to videos, Basic Facts booklets, timelines showing the process for applications, etc.
  • Trademark Process: Step-by-Step evaluation of whether filing a trademark application is right for you.
  • TEAS Nuts and Bolts Videos: Explains various stages of the application process.
    • These videos may be retired after the January 18, 2025 fee increases go into effect. If so, the USPTO also has another collection of Trademark Videos that include good primers on various topics.
  • Trademark Basics Bootcamps: Series of 8 episodes, updated frequently.
  • Why Hire a Private Trademark Attorney: In some cases, having an attorney represent you before the USPTO may be required (e.g., if you are domiciled outside the U.S.). In other cases, the application process can be complicated and frustrating, which may make the decision to engage an attorney more straight-forward.
  • Protecting Against Trademark Scams: The prevalence of fake trademark solicitations and extortionately high invoices sent by third parties mimicking the USPTO’s official notices – and it’s easy to be fooled. Reach out to your trademark attorneys for confirmation if you are not sure whether a communication you’ve received is legitimate.