Key Takeaways

  • The trademark process includes pre-filing research, mark selection, filing, examination, publication, and registration.
  • Choosing a strong and distinctive mark increases the chances of approval.
  • The USPTO examines and may issue Office Actions or publish the mark for opposition.
  • Post-registration responsibilities include monitoring, renewal, and preventing genericide.
  • International trademark protection requires separate filings or use of the Madrid Protocol.

Trademark Process: Everything You Need to Know

The trademark process involves several steps. A trademark is a word, name, phrase, logo, or even a symbol that businesses use to assign an identity to the company or distinguish a specific good or product. In essence, the trademark is the brand name of the company. A trademark must be registered with the United States Patent and Trademark Office (USPTO). Keep in mind that the trademark is not permanent and will only remain valid if the trademark is renewed every 10 years.

Registering a Trademark

If you are considering registering a trademark, you should first consider whether or not it’s worth doing it alone. It is advisable to hire a qualified trademark attorney who can assist in the process to ensure that you receive the trademark protection you are looking for promptly. Further, the process of obtaining a trademark is a legal one—with legal requirements, fees, and deadlines that must be followed to be successful. The following are four steps that a business should take when registering a trademark:

Step 1. Pre-Registration

Only companies that manufacture or sell goods and/or services are entitled to trademark protection. Inventions, literary works, and other types of original artwork aren’t covered. Pre-registration also includes looking up local statutes on the registration of trademark names to see if certain ones are allowed.

Step 2. Mark Selection

Before applying for trademark selection, you must select the mark that you will use. This simply means that you will need to select a name that is eligible for trademark protection. There are two key requirements when making such a selection: [1] The mark must be used in commerce and [2] the mark must be unique, meaning it must not already be in use. There are four categories of uniqueness that the mark can fall under: arbitrary, suggestive, descriptive, and generic. Arbitrary is when the mark is distinctive. Suggestive is treated the same way as those marks under the arbitrary category. Trademarks that fall in the descriptive category are only available for protection if they have a common secondary meaning, especially the consumers who may be purchasing the product or service. Generic trademarks do not apply for protection since they aren’t unique.

Another thing you’ll want to think about is whether or not the mark you selected is robust enough to apply for trademark protection. When selecting your mark that you will want to have protected, consider your product or service, and determine whether or not the mark relates to the product or service. You’ll want to select the strongest mark you can for a greater chance of success.

Be sure to conduct a search on the USPTO website to see if the trademark is already protected by another business. If your product or service is going to be sold outside of the United States, you’ll need to search the trademark registries of those countries you are going to conduct business in.

Step 3. Application

After you’ve selected your mark, you must file an official trademark application, in which you must identify one of two ways in which your mark is to be used – for use in commerce or with the intent to use. An “intent to use” means that your mark has not yet been used, but will in fact be used in the future. To “use in commerce” means that your mark has already been used, in which you must supply proof of its use. You can file your application online directly through the USPTO website. The following three types of applications are available:

  1. TEAS Regular: Filing fee of $325/per each class of goods and/or services.
  2. TEAS Plus: This option is considered to be the one with the most stringent requirements. There is a filing fee of $225 per each class of goods/services.
  3. TEAS Reduced Fee: The filing fee is $275 per each class of goods or services.

Step 4. Evaluation to Verdict

This last phase will involve the review of your trademark application, publication in the USPTO Official Gazette, and the issuance of a trademark certification of registration. You can monitor the status of your application through the Trademark Status and Document Retrieval System every couple of months. During this phase, your specific application will be forwarded to an examining attorney, who is responsible for the review of your application and ultimately determining whether or not it will receive trademark protection. If your application fails, you will receive an Office Action explaining the reasons for refusing your application. However, if any minor errors need to be addressed, the examining attorney will contact you directly so that you may fix such errors, rather than the entire application being refused. You will have six months to make the corrections; however, if you fail to do so within the required timeframe, then your application will be refused.

The trademark application process can take up to a year. Note that it takes roughly 12 months for the examination to be completed, potentially longer if there are issues, minor errors, or missing documentation.

If there is opposition to the trademark once it is published in the Official Gazette, a period of 30 days will be given for someone to come forward with any concerns. If not, the USPTO will register the mark and you will now have the full protection of your mark.

Timeline: How Long the Trademark Process Takes

The full trademark process—from application to registration—can take 12 to 18 months or longer depending on complexity. Here’s a rough timeline:

  • Filing to examination: ~3 to 6 months.
  • Office Action response (if issued): Within 6 months.
  • Publication for opposition: 30-day window.
  • Registration (if no opposition): Typically 3 to 4 months after publication.

Expedited processing isn’t currently available through the USPTO, so early planning is crucial.

Monitoring and Enforcement of Trademark Rights

The USPTO does not monitor your trademark usage or enforce your rights. Trademark owners must:

  • Monitor the market for potential infringements or confusingly similar marks.
  • Use watch services or subscribe to trademark monitoring tools.
  • Send cease and desist letters or pursue legal action if infringement occurs.

Failure to enforce your trademark can weaken or even invalidate your rights.

Step 5. Post-Registration Maintenance and Renewal

Trademark protection doesn’t end at registration. Owners must actively maintain their trademarks to keep rights valid. The USPTO requires ongoing filings:

  • Between years 5 and 6: File a Declaration of Use (Section 8) to confirm the mark is still in use.
  • At year 9 and every 10 years thereafter: File a Combined Declaration of Use and Application for Renewal (Sections 8 and 9).
  • Optional (but helpful): File a Section 15 Declaration of Incontestability after five years of continuous use to strengthen the mark’s legal standing.

Failing to meet these deadlines can result in cancellation of your trademark.

Trademarks vs. Copyright and Patent Protection

As previously noted, a trademark is a name, symbol, or any combination thereof that distinguishes the product or services of one seller from that of another. A patent is a license provided by the government, specifically the USPTO, providing you with the protection of your invention. This means that no one else can use or sell your invention, as you’ll have patent protection. A copyright is an exclusive right to publish, perform, print, or record a piece of literature, art, or musical material.

Copyright

  • Your work is protected immediately after you create it. You need not register for copyright protection.
  • While you are not required to register, many people do in fact register for the added protection and proof of ownership.
  • As the holder of the copyright, you have the authority to transfer pieces of your work to others, this can include allowing others to perform or display your work publicly, issue copies, or reproduce it either in pieces or in its entirety.

Patent

  • You must file a patent application to be protected.
  • Generally, people will file a utility, design, or plant patent; this depends entirely on the type of invention you have. However, you can in fact apply for all 3.
  • The patent process can take one to several years to complete, depending on the complexity of your invention.
  • The patent filing fees can be must costlier than trademark fees, particularly if you hire an attorney to assist you in the patent process. Even if you hire an attorney to assist in the trademark process, the legal fees are generally cheaper as the trademark process is much more straightforward than the patent process.
  • While a trademark provides that you must select a mark to be protected, the patent process involves a lot more detail in which you must thoroughly explain the invention, how it is new and obvious, and provide several illustrations of your invention.
  • Once you do obtain protection, your invention will be protected for a period of 20 years, with the ability to renew indefinitely.

The important thing to remember is that trademarks, patents, and copyrights are types of Intellectual Property (IP) protections. You’ll want to first determine what type of protection you need; if you want to seek trademark protection, you’ll be able to utilize the above-mentioned steps to navigate the process.

Common Trademark Filing Mistakes to Avoid

Trademark applications are often delayed or rejected due to avoidable issues:

  • Choosing a weak or descriptive mark.
  • Failing to search for existing similar trademarks.
  • Misclassifying goods or services.
  • Submitting incomplete or incorrect specimens.
  • Ignoring Office Actions or deadlines.

Hiring a trademark attorney can significantly reduce these risks.

International Trademark Protection

U.S. trademark registration protects your mark only within the United States. For international protection, consider:

  • Filing in individual countries where you conduct business.
  • Using the Madrid Protocol, a global treaty that allows centralized filing for multiple jurisdictions via the USPTO.

Keep in mind that not all countries participate in the Madrid Protocol, and local counsel may still be necessary.

Frequently Asked Questions

  1. How long does the trademark process take?
    The process typically takes 12 to 18 months, though delays can occur if there are Office Actions or opposition.
  2. Can I register a trademark internationally through the USPTO?
    Yes, via the Madrid Protocol you can extend protection to other participating countries after filing in the U.S.
  3. What happens if I don’t use my trademark after registering?
    If a trademark is not used in commerce, it may be canceled. Ongoing use is essential to maintain rights.
  4. Do I need an attorney to file a trademark?
    It’s not required, but highly recommended—especially if you're unfamiliar with legal classification, USPTO rules, or opposition procedures.
  5. What is a Section 8 or Section 15 filing?
    Section 8 confirms continued use between years 5–6, and Section 15 is a declaration of incontestability, strengthening your mark after 5 years of use.

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