Trademark registration in the United States - The ultimate guide

The United States of America is the 3rd biggest country in the world by population and the world’s largest economy by nominal GDP, which makes it very attractive for doing business. Trademark registration in the US provides multiple benefits, including deterring others from infringement and providing you with legal options in case infringement occurs.

Registering a trademark in the US takes between 12-15 months on average, provided there are no objections or opposition proceedings that could prolong the process even further. You can check actual processing times directly at the USPTO’s website - HERE.

The authority that administers and processes trademark matters in the US is the United States Patent and Trademark Office (USPTO). 

The USA is also a part of the Madrid system, meaning you can apply for a US trademark through the World Intellectual Property Organization (WIPO); however, such an application would need to be based on an existing “basic application” registered on a national level in one of the member countries.

The USPTO charges a flat fee of $250.00 (TEAS Plus application) or $350.00 (TEAS Standard application) per class of goods or services. This differs from jurisdictions like Canada, the EU or the UK, which differentiate between prices for the initial class and additional classes.

In TEAS Plus, the applicant can only choose goods and services that are already in the Goods and Services ID Manual and have already been approved by the USPTO. Conversely, under the TEAS Standard trademark application, applicants can draft their own unique description of the goods and services. The choice usually comes down to whether fitting goods and services can be found in the ID Manual - if so, then TEAS Plus would be recommended. Besides the lower price, the refusal rate for TEAS Plus applications is much lower than other applications and about half that of TEAS Standard applications.

If you want to register a trademark for your business, the USPTO requires that a US-licensed attorney represent foreign-domiciled applicants. According to the USPTO, an applicant’s domicile is their place of permanent and legal residence, or where they have their principal place of business, ie.: (i) A principal place of residence is where a person resides for the majority of the time, or what they would consider their principal home or main home; and (ii) A principal place of business is where the headquarters for a company is located, usually where you would find senior executive offices for the headquarters or those who control the activities of business.

If you’ve already registered your trademark (or just filed the trademark application) in another country, you can base your US trademark application on that foreign registration (or foreign trademark application) via a priority claim. Specifically, an applicant must file a claim of priority within six months after the filing date of the foreign application. This may speed up the application process and increase your chances of approval.

USA is a "first-to-use" jurisdiction, which means that the rights to a trademark are granted to the person or entity that first uses it in the territory of the USA. Before registration, a mark is protected under the common law and is referred to as a “common law trademark”. 

Common law trademarks are noteworthy since, compared to first-to-file jurisdictions, some level of protection is granted to a mark by merely being used in commerce. However, we have to point out that common law's degree of protection is severely limited compared to a trademark registered at a state or federal level. For example, registration is necessary for undertaking legal actions against trademark infringement.

When submitting your application, you must also specify the legal reason for why you are allowed to register your trademark, the so-called filing basis. The most common filing bases are Section 1(a) “use in commerce”, for when you already genuinely use the mark in the course of business when filing the application, or Section 1(b) “intent to use”. The difference between the two lies in that in the case of the former, you have to submit evidence of use of the mark (a so-called specimen) already together with the application, whereas, in the case of the latter, you will be required to do so later in the proceedings for an additional fee. Either way, the trademark will not be registered until evidence of genuine use is presented to the USPTO. 

You can learn more about the two filing bases and acceptable forms of specimen in our article on Intent to use versus use in commerce (US).

Since trademark registration in the US can get quite complex, the USPTO has prepared a handy chart detailing the timelines for Section 1(a) use-in-commerce applications and Section 1(b) intent-to-use applications.

However, we will list and explain a simplified version of the process. After receiving your application, the USPTO will:

After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned, and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration. A complete review includes a search for conflicting trademarks and an examination of the written application, the drawing, and any specimen.

If the examining attorney raises no objections to registration, or if you overcome all objections, the examining attorney will approve the trademark for publication in the "Official Gazette," a weekly publication of the USPTO. The USPTO will send you a notice of publication stating the date of publication. After the trademark is published, any party who believes it may be damaged by the registration of the trademark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. In addition to the 30-day publication window, a potential opposer may request either a 30-day extension or a 90-day extension for a good cause (ie. if the opposer needs to investigate the claim). If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process and matures into registration.

If your application is filed on the Section 1(a) use-in-commerce basis, your trademark will register, provided that no opposition is filed. However, if your application is based on the Section 1(b) intent to use the trademark in commerce, your trademark will not register yet. Instead, the USPTO will issue a Notice of Allowance about eight weeks after the date the trademark was published. The applicant then has six months from the date of the notice of allowance to either: 

Within approximately 2-3 months, the USPTO will issue the registration. A hard copy of the certificate can be requested for $20.

Contrary to most jurisdictions, the USPTO will issue an Office Action and preliminary refuse to register your trademark if it finds another earlier registered mark or earlier-filed pending mark confusingly similar to yours for related goods or services. Therefore, performing a trademark search to uncover similar existing and confusingly similar trademarks is even more important before filing an application. To avoid refusal, the easiest solution is usually to tweak the list of goods and services to avoid overlaps with the similar already existing/pending mark, but sometimes a change of brand name or logo might be necessary. 

It is also possible to object to this ruling and prepare a response explaining why the assumed likelihood of confusion doesn’t exist.

A US trademark is valid for 10 years from the date of registration. Between the 5th and 6th year from the date of registration, the owner is required to perform a “Section 8 maintenance filing”, which includes submitting a signed declaration saying that they’re continuing to use the trademark with the goods and services listed in the registration. The owner must also submit one specimen for each class of goods or services. Whole process can be done online, via USPTO’s website upon payment of prescribed fee.

Between the 9th and 10th year of validity, the trademark can be renewed via Section 9 filing for another 10 years. There’s no limitation to the number of times a trademark can be renewed as long as the trademark is still used in commerce. If the owner misses the renewal window, they can still renew the trademark within a six-month grace period upon payment of prescribed fee.