From trademark search to U.S. application

Imagine a small business that sells reusable lunch containers. The owner has searched for similar brands and now wants a U.S. federal trademark registration. Filing starts a process; it does not buy an approved name. An examining attorney at the USPTO reviews the application, and anyone who believes they would be harmed gets a chance to oppose it before it registers. 1 Work through the steps below in order.

Decide exactly who owns what

Name the right applicant: the person or company that owns the mark on the day you file. If the business is a company that uses and controls the name, the company is the applicant, not the founder who happens to hold the login, and not the design agency that drew the logo. Get this right the first time. If the wrong party is named, the application is void, and neither an amendment nor an assignment can fix it; only a typo in the right owner's name, such as a missing "Inc.", can be corrected. 9 The application also asks for the applicant's legal entity type, domicile address, email and, for individuals, citizenship. 2

Then decide which version of the mark you are filing. A standard-character mark covers the words themselves, in any lettering. A stylized or design ("special form") mark covers one particular logo or lettering, and you upload an image of it. 12 For the lunch-container business, the plain name is usually the filing that matters most; the logo is a separate filing choice, not a free extra. Pick the version that matches the protection you want, not whichever file is easiest to upload.

Describe the goods or services with care

List what the brand is actually used on, or what you genuinely intend to use it on. Choose your descriptions from the USPTO's ID Manual: its entries are pre-approved and already classified. 27 Goods and services fall into 45 international classes (1–34 for goods, 35–45 for services), and you pay a filing fee for each class you claim. Writing your own description instead of using the ID Manual costs an extra fee per class. 67

Be precise from the start, because the description can be narrowed or clarified later but never expanded. 10 "Reusable plastic food storage containers" is a description the examiner can work with; "lifestyle products" is not. Vague wording such as "miscellaneous services" can cost you your filing date or trigger a refusal. 7 Never claim current use on products you do not sell yet to make the application look bigger: the dates and use statements are signed under penalty of perjury. 3 As the business grows, file a new application for the new products.

Choose a filing basis that matches the facts

Most small businesses use one of two bases. 3

• Use in commerce (Section 1(a)): you already sell the goods, or render the services, under the mark. You give the date of first use anywhere and the date of first use in commerce, plus one specimen per class.
• Intent to use (Section 1(b)): you have a genuine plan to use the mark but have not started. You can file now, but the mark does not register until you file proof of use (an amendment to allege use or a statement of use) with a specimen and a further fee per class. 36

Foreign-application, foreign-registration and Madrid routes have their own requirements. 3

A specimen shows the mark as customers actually meet it in real sales, not your logo file. For goods, that means a photo of the mark on the product, its label, tag or packaging, or a webpage that shows the product, the mark near it, a price and a way to buy. A webpage specimen must include its URL and the date you accessed or printed it. For services, advertising that links the mark to the service works. Printer's proofs, digitally created or altered images, mockups and draft websites are rejected. 4 Photograph the lunch container with the name on it, or capture the shop page with the add-to-cart button, and note the URL and date.

Use the official filing route

1. Create your own USPTO.gov account with two-step authentication at my.uspto.gov. 1 Each account belongs to one person; company accounts are not allowed. If someone offers to make an account for you, stop: never verify an account someone else created. 5
2. Verify your identity before you need to file. Online verification through ID.me typically takes less than 15 minutes; the notarized paper form takes two to three weeks to process. The USPTO cannot excuse a missed deadline because your account was not verified in time. 5
3. File in [Trademark Center](https://trademarkcenter.uspto.gov/). Enter the applicant, the mark, the goods or services, the filing basis, contact details and the signed declaration. 12 The person signing must be authorized to sign for the owner, and the statements are verified under penalty of perjury. 23
4. Pay in Trademark Center. 2 Check the current amounts on the USPTO's trademark fee information page first: a fee per class, plus surcharges for missing information, free-form descriptions and very long descriptions. Fees are generally not refunded, and paying does not guarantee registration. 6
5. Save the submitted application and its serial number. You need them to follow the application.

If you live outside the United States, you must hire an attorney licensed to practice law in the United States. U.S. residents can file on their own, though the USPTO strongly encourages hiring a trademark attorney. 1

Expect examination rather than instant approval

Examination takes months; the USPTO publishes current wait times. An examining attorney reviews the application and may issue an office action that refuses the mark or asks for changes, for example because it is confusingly similar to a registered mark, merely describes the goods, or comes with an unacceptable specimen. 14

Answer every office action by its deadline. For an ordinary application you have three months from the issue date, and you can request an optional three-month extension for a fee; for a Madrid application you have six months and no extension. Miss the deadline and the application is abandoned. 1 If the office action refuses the mark as confusingly similar or descriptive, have a U.S.-licensed trademark attorney draft the response before the deadline; those refusals turn on legal argument and evidence, and a weak response ends in a final refusal.

Once the examiner approves the mark, it is published in the weekly Trademark Official Gazette, and anyone who believes they would be harmed has 30 days to oppose or to ask for more time to oppose. Without an opposition, a use-based application moves to registration. 1 An intent-to-use application instead receives a notice of allowance about eight weeks after publication. You then have six months to file a statement of use or a request for more time. You can file up to five extension requests, six months each, for at most 36 months from the notice of allowance. Miss the deadline and the application is abandoned; you have two months from the notice of abandonment to petition to revive it. 18

Track progress yourself. Check the application in Trademark Center ("Drafts and docket") or in TSDR every three to four months, and keep your address and email current with the USPTO. 1 Your application is public, so expect official-looking mail and email from private companies. Real USPTO emails end in "@uspto.gov", and if a notice is not in your TSDR record, it is not official. 11

Keep the registration connected to the real business

Leave the filing knowing four things: who owns the mark, which version you filed, which goods it covers, and what deadline comes next. Put those deadlines in your calendar. After the registration issues, you must file maintenance documents, starting between the 5th and 6th years and again between the 9th and 10th years after registration, or the registration is cancelled or expires. 1 Keep using the mark the way you described it, on the goods you listed, so that the record keeps matching the brand your customers actually see.