Overview of the U.S. Trade Mark Application Process

The application process to register a trade mark in the US can be complex, and differs from the process in the UK and EU. The Trademarkroom has an in-house US attorney who can take you through the process every step of the way.

Step 1.  Pre-Filing Search

• Purpose: Check for existing trade marks that may conflict with your proposed mark.
• Recommended: The Trademarkroom offers an extensive search – allowing you to determine any potential risks to your application. You gain the experience and advice of our in-house US attorney and can then make an informed decision as to whether you wish to go ahead with the application.

Step 2. Choose the Filing Basis

You must select one or both:

• “Use in Commerce” (Section 1(a)): You are already using the mark in U.S. commerce.
• “Intent to Use” (Section 1(b)): You plan to use the mark in the future.

This differs from other country application processes, therefore it is important to seek expert guidance, to ensure that you are choosing the rights filing base for you. This is also the option to file on the basis of foreign applications and also file through the Madrid Protocol.

Step 3.  Filing the Application

Once you are happy to go ahead, we can then file the application on your behalf. We do this online through the US Trade Mark Office (USPTO). To do so, we need the following information confirmed:

• Mark (word, logo, slogan, etc.)
• Goods/services description
• Filing basis
• Owner details

The fees to file in the USA depend on the number of marks you wish to file, and the goods and services you offer under these marks. If you get in touch with the Trademarkroom, we can provide a no obligation quote.

Step 4.  USPTO Review by Examining Attorney

Timeline: 12- 14 months after filing

• The examiner checks:
  • Formalities
  • Conflicts with existing marks
  • Distinctiveness
  • Descriptiveness or genericness
  • Use/specimen validity

Possible outcome:

• No objections → published for opposition
• Office Action (non-final refusal) The USPTO may refuse your application on the basis of existing similar trade marks. They may also refuse the application if the mark does not comply with the criteria of a registered trade mark, or seek further information to ensure compliance.

Step 5. Publication for Opposition (30 Days)

If approved, the mark is published in the USPTO Official Gazette.

• Any third party may file an Opposition or Extension to Oppose. Even if there has been no similar marks raised in the examination process, there is no guarantee that an opposition wouldn’t be filed.
• If no opposition, the mark proceeds to registration.

Step 6. Final Steps Based on Filing Basis

A. Use in Commerce (1(a))

• If no opposition: mark proceeds to registration.

B. Intent to Use (1(b))

• USPTO issues a Notice of Allowance (NOA)
• You must file a Statement of Use (SOU) within 6 months (or request extensions up to 36 months total).
• SOU must include a specimen of use.

Step 7: Registration Issued

• The USPTO issues a Certificate of Registration
• Registration is valid for 10 years (with maintenance).

Step 8. Post-Registration Maintenance

To keep the registration alive, you must file:

• Section 8 Declaration (between years 5–6)
• Optional Section 15 Declaration (incontestability status)
• Renewal (Sections 8 & 9) every 10 years

If you would like to discuss how to protect your trade mark in the USA, get in touch with the Trademarkroom team today.