Filing an application for a registered trademark can help protect your business’s branding and unique identity. But the process of filing for a trademark is tedious and time-consuming. Without the proper legal guidance, your application could be delayed or denied by the U.S. Patent and Trademark Office (USPTO).

8 Steps to File for Trademark Protection

Here is a list of the key steps in filing a trademark application so you can collect the information you need and consider whether to hire legal counsel for assistance.

Step 1: Conduct a trademark search

The first step in filing for trademark protection is conducting a search of existing trademarks to ensure that no one else is using your mark. The USPTO will not register your trademark if it finds a “likelihood of confusion” with another registered mark.

It is important to do a comprehensive search to make sure no other similar marks are used for similar goods or services. To conduct a search yourself, visit the Trademark Office’s website and use its online search tool. You can search for existing trademarks by keyword, category, and other criteria. You should conduct an additional sweep to ensure that no similar marks are registered with any state governments.

Step 2: Select the right trademark class

After you conduct the trademark search and determine that your desired trademark is available, the next step is to select the right trademark class. There are 45 different trademark classes corresponding to different categories of goods and services.

Selecting the appropriate class is important because it affects the scope of protection afforded to your trademark. But you can only select classes of goods or services in which you are actually using the mark or have concrete plans to start using it in the near future. You should also avoid selecting too many classes because it could cause the USPTO to deny your application if you cannot prove that you are using the mark in connection with that class of goods or services.

Step 3: Prepare your trademark application

Once you have selected the appropriate trademark class, the next step is to prepare your trademark application. This step will require you to provide a number of details about your trademark, including a description of what the mark is and how you plan to use it in commerce. You will also need to identify the format of your mark, whether it is a design or standard character mark in text only without any design elements, and provide a picture of how you are using the mark.

You will also need to provide your contact information and pay the required fee. The initial filing fees for a trademark application are typically between $250 and $350 for each class of goods or services.

Step 4: Submit your trademark application

Now it is time to submit your trademark application to the USPTO through its Trademark Electronic Application System, or TEAS for short. Make sure all information that you submit is accurate and complete.

After submitting your application, you will receive a confirmation email from the USPTO, and your trademark will be assigned a serial number.

Note that receiving a serial number does not mean that the USPTO has approved your trademark application.

Step 5: Wait for the USPTO to review your trademark application

Next, the USPTO will review your application. This process can take several months. During this time, the USPTO will conduct a thorough review of your application for a registered trademark to ensure that it meets all of the legal requirements. You should monitor the status of your application online to make sure that you do not miss any steps or deadlines in the filing process.

The examining attorney at the USPTO may have questions or concerns about your trademark application. If you receive a letter from an examiner, which is called an “Office Action,” do not be surprised. The key is to respond quickly and thoroughly to the examiner’s letter.

If the examining attorney has no objections to your registration or if you address all of their objections, the USPTO will publish your mark in its weekly “Official Gazette.” Publication gives anyone who has concerns about the mark the opportunity to file an opposition, so long as they file within 30 days or file a request to extend the time to file an opposition.

If no one files an opposition or if any opposition is unsuccessful, your application will be approved, and you will receive either a registration certificate (if you have already submitted evidence showing use of the mark) or a notice of allowance (if you have not). The notice of allowance means that your trademark registration is approved pending the submission of proper evidence of use.

Step 6: Use your trademark

If the application was filed without evidence of use, the notice of allowance means that it is time to use your trademark in commerce in order to complete the application process. Therefore, you must start using your trademark in connection with the goods or services specified in your application. You can use your trademark by putting it on your products, packaging, or advertising materials.

Step 7: File a statement of use

If the application was filed without evidence of use, the final step in the trademark application process is filing a statement of use. You file this document with the USPTO to confirm that you are using your trademark in commerce.

You have to file this document within six months of receiving the notice of allowance, or the USPTO may cancel your trademark registration.

Step 8: Wait for your trademark registration to be approved

At this point, all you have to do is wait for the USPTO to approve your trademark registration. It will likely take several months for the USPTO to review your statement of use to ensure that it meets all of the legal requirements.

If your registration is approved, you will receive a certificate of registration, which serves as proof of your trademark registration. You can then start using the registered trademark symbol, ®.

Your trademark registration will need to be renewed after the first five years, and then again every ten years thereafter. You can renew the registration indefinitely, as long as you continue to use the mark in commerce.

Keep in mind that if your registration is approved, enforcing your rights is your responsibility, not the USPTO’s.

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