Trademark registration with the United States Patent and Trademark Office (USPTO) protects brand names, logos, slogans, and other marks that identify the source of goods or services. Federal registration provides nationwide protection, a legal presumption of ownership, and the ability to bring infringement actions in federal court.
25 steps across 7 sections
1. 1. Trademark Clearance Search
- Free search: USPTO TESS (Trademark Electronic Search System)
- Professional search: $300-$800 through a trademark attorney or search firm
- What to check: Identical marks, similar-sounding marks, marks with similar meaning, design marks in the same class
2. 2. Determine Your Filing Basis
- Use in Commerce (Section 1(a)): Mark is already being used in interstate commerce. Must submit a specimen showing use.
- Intent to Use (Section 1(b)): Mark is not yet in use but you have a bona fide intent to use it. Requires a later Statement of Use ($150/class) after the mark is approved.
3. 3. Identify Goods/Services and Classes
- Class 9: Software, apps, electronics
- Class 25: Clothing, footwear, headwear
- Class 35: Advertising, business management, retail services
- Class 41: Education, entertainment, training
- Class 42: Computer and technology services
4. 4. File the Application
- Applicant name and address
- Mark (word mark, design mark, or both)
- Goods/services description (use ID Manual terms)
- Specimen of use (if Section 1(a))
- Filing fee ($350/class minimum)
5. 5. USPTO Examination (3-4 months after filing)
- Likelihood of confusion with existing marks
- Descriptiveness or genericness
- Proper specimen of use
- Compliance with formal requirements
6. 6. Office Actions
- Likelihood of confusion with a prior mark
- Merely descriptive mark (requires showing secondary meaning or amending to Supplemental Register)
- Improper specimen
- Vague identification of goods/services
7. 8. Registration or Statement of Use
- Use-based applications: Registration certificate issues after the opposition period closes with no challenge.
- Intent-to-Use applications: You must file a Statement of Use ($150/class) showing the mark is now in commerce. You get 6 months initially, with up to five 6-month extensions ($125 each).
Common Mistakes
- Skipping the clearance search
- Choosing a descriptive mark
- Wrong class selection
- Vague goods/services descriptions
- Ignoring Office Actions