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U.S. Trademark Registration Process – 

How to Register Trademarks  

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Strategies and Steps for How to Register Trademarks

Use and Intent-to-Use Trademark Applications

1.  A U.S. trademark application is filed based either upon an intent-to-use filing basis (you intend to use the mark for the listed goods/services post filing) or based upon actual use of the mark in interstate commerce (you are using the mark in interstate commerce for the listed goods/services as of the application filing date).

2.  Although a foreign applicant may rely upon its foreign trademark registration for securing a U.S. trademark registration, this post will not cover that filing option.

3.  Minimum filing details for application acceptance are:

(A) The full name of the applicant / trademark owner

The party that controls the nature and quality of the goods/services must be listed as the trademark applicant or the application may be declared void and any resulting registration unenforceable

(B) A name and address for correspondence

(C) A clear drawing of the mark

The application may only list one mark and the mark must be depicted in a manner that corresponds with the actual use of the mark in trade.  For example, if the mark is filed as one word, AcmeMax, it may not be used as two words, Acme Max.  Furthermore, if a design logo is filed with a word mark, the positioning of the logo design appearing on products must match the mark as depicted in the application, i.e., logo and word positioning must match.

(D) A listing of the goods or services

The goods and services listed in an application must accurately reflect those goods and services offered in trade under the applied-for mark.  If the goods and services are not accurately listed in the application, they may not be amended post filing to expand the scope of those goods and services.  If the goods and services are not accurately listed in an application, a new trademark application filing may be required.

(E) The filing fee for at least one class of goods or services

Application Review 

1.  Firstly, once the application is filed, an Examining Attorney reviews the application for any procedural or substantive issues – and that review will typically take around three-four months post filing date.

2.  Secondly, if the Examining Attorney finds any issues with the trademark application, the Examining Attorney will either issue an Office action explaining the reasons for the refusal or contact the applicant directly by email or phone in an effort to resolve the issue(s).

3.  Next, if the Examining Attorney issues an Office action, the applicant must respond to the Office action within six months of the mailing date, or the application will be declared abandoned.

Post Application Approval Process                                                      

1.  If/once the application is accepted by the Examining Attorney, the mark will be published for third party opposition (a/k/a a formal objection).

2.  As a result, any party who believes that it may be damaged by registration of the mark has thirty (30) days from the publication date to file either a notice of opposition to registration or a request to extend the time to oppose the registration.

3.  If the mark is published based upon the actual use of the mark in U.S. commerce for all of the listed goods/services (or on a foreign registration), and no oppositions are filed, the USPTO should register the mark and issue a registration certificate.

4.  If the mark is published based upon the applicant’s bona fide intent to use the mark in commerce and if no oppositions are filed, the USPTO will issue a Notice of Allowance.

5.  The applicant then has six (6) months from the mailing date of the Notice of Allowance to either (1) submit a Statement of Use affidavit showing use of the mark for all of the goods/services or (2) request a six-month Extension of Time to file a Statement of Use. Ha Name

Note: The applicant may also decide to divide an application into two separate applications – one for any goods/services already in use and a second for the goods/services not yet in use. This would permit the mark to register for the goods/services in use, while the second application would list the goods/services not yet in use and remain pending until the mark is used for those goods/services. 

Plot a course for “smooth sailing”

Notice of Allowance and Statement of Use Process

1.  The applicant may file up to five six-month extensions, not to exceed total of three years from the mailing date of the Notice of Allowance.

2.  If a Statement of Use is not filed within that three year period, the trademark application will go abandoned.

3.  Once the applicant has filed its Statement of Use, and it is accepted by the USPTO, the USPTO should issue a registration certificate.

Post Registration Steps to Maintain Registration

Once the trademark owner receives the registration certificate, the trademark owner must still take all necessary steps to maintain the registration going forward. The owner of a registration must file an Affidavit of Continued Use or Excusable Non-use, and may file an affidavit declaring the mark as “incontestable,” between the fifth and sixth year of registration. The applicant must also file renewal applications every ten years from the date of registration.

Contact Us for assistance with trademark matters and to discuss steps for how to register trademarks. 

Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

• Music: “The Returning”  by Jeremy Wray – Copyright Jelsonic(jelsonic.com) How to Trademark a Name
• The music is licensed under creative commons attribution license available on the Free Music Archive
• The music contained in this podcast is only a portion of the original; to hear the full version click here

Disclaimer: This podcast is not legal advice.  The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting.  Full Disclaimer details appear at www.TrademarkTitan.com.

Steps for how to register trademarks steps for how to register trademarks