What You Need to Know about the Trademark Application Process

04 Sep What You Need to Know about the Trademark Application Process

Many small and creative businesses are interested in trademarking their name or logo. While it may seem like a daunting task and does take some time (approximately ten months without any bumps in the road), registering a trademark can be done relatively smoothly with the support of an experienced lawyer.

The Application Rundown

The U.S. Patent and Trademark Office (USPTO) oversees the application process and has established procedures. To prepare an application, your lawyer will need to know several items:

1. The name and address of the person or entity who will be owning the trademark. The trademark owners can be one or more individuals, one or more companies, or a combination of individuals and companies.
2. If the owner is a company, you must specify the type of company (corporation, LLC, or partnership) and the state in which the company was formed and registered.
3. You will need to know if you want to register just the words of the potential trademark, a logo, or a combination of words and logo. Registering just words offers flexibility for future logo designs and changes, but registering a logo often increases the chances of registration, as the presence of more elements enhances a trademark’s uniqueness.
4. Your application will either be filed as “in commerce” or “intent-to-use.” If your product or service is already available for sale or use in the market, you will provide the corresponding dates and proof that it is accessible to the public. Your lawyer will request “specimens,” which are photos or screenshots of your product or service on a live webpage, brochure, or other relevant materials. If you have not officially launched your trademark, you will file as “intent-to-use,” meaning that you are not currently selling but plan to do so within the near term (as measured by the USPTO, which is typically three years).
5. You will consult with your lawyer to determine the classification of the trademark’s goods and services. Each trademarked item must be associated with a corresponding good or service description in the USPTO system. The USPTO utilizes a series of International Classifications, agreed upon by treaty among nearly all nations, to classify goods. It is possible to have a similar trademark with another entity, but the goods or services must be different so that consumers would not confuse different products or companies. So long as the product or service is clearly in a different field, the two similar trademarks may coexist.
6. The international classifications are important because registration fees are calculated based on the number of international classes the trademark will be assigned to. The application fee is non-refundable and is $350 per international class. Depending on your trademark, you could register it in one international class or several, and each international class means a separate $350 fee.

Trademark Application Timeline

Those are the basics for the application. The timing of the applications looks largely like this:

** As of October 2025, the USPTO takes nine to ten months to review an application **

Pre-Registration

Gather all the necessary items above, including any logo images or other specimens. Consult with the lawyer about your description of goods and services. The lawyer may need to do some searches to eliminate easily found potential conflicts. In most cases, this work can be completed in under a day.

Day 1

Application Day. The application is submitted, and the non-refundable fee is paid to the USPTO.

Review the application

The USPTO begins its review. The review is typically brief and can range from less than a day to as long as a week, depending on the nature of the proposed trademark. The USPTO Examining Attorney will determine if the proposed trademark meets all the requirements for registration. The application will proceed to the next registration stage if it meets all the requirements. If the application is deficient in some way, the Examining Attorney may either communicate informally if the deficiencies are relatively minor and require only clarification or issue a formal Office Action that describes the deficiencies, requiring a formal response (read more below).

Publication for Opposition

Assuming the Examining Attorney has not issued an Office Action, the proposed trademark will be published for opposition by anyone who might be harmed or damaged by the registration of the trademark. Anyone claiming potential injury must file an opposition with the Trademark Trial and Appeal Board or ask for an extension of time to consider whether to file an opposition. Rule of Thumb: if a request for an extension of time is filed, it is a very good bet that an opposition will be filed. The extra time is so that lawyers can prepare the opposition.

What is the Opposition Period?

The publication of the mark begins a 30-day clock in which someone who believes registration of your trademark may negatively impact their business or interests can oppose registration. An affected person must file an opposition with the Patent & Trademark Office within the 30-day window. A person can also file an extension of up to 90 days to respond if necessary. If no one files an opposition or an extension within the first 30 days, your application will then proceed to the final registration process.

No Opposition Filed

If nobody opposes the trademark, then the mark will proceed to the final registration process.

Registration Completed and Certificate Issued

The USPTO will issue the registration anywhere from 5 to 10 weeks after the opposition period closes. The USPTO used to mail formal registration certificates, but that is no longer the case. An electronic registration certificate is posted, can be downloaded for your records, and then printed and framed if you like.

What is an Office Action?

Sometimes, after submitting a trademark application, the trademark office responds with something called an “Office Action.” This Office Action means that there is an issue with the trademark that needs to be addressed. A wide variety of items can trigger a non-final office action, ranging from minor matters, such as needing clarification of a statement, addressing some problems with the submitted images, or requiring changes to the description of goods. More complicated issues could range from a mismatch between the trademark and the specimen submitted to a potential refusal to register. An office action is a bump in the road, but it is relatively common.

While we attempt to avoid any conflicting trademarks by conducting a trademark clearance search, in some cases, an office action is issued when a conflicting trademark is found that may cause confusion with another trademark. When that happens, the USPTO sends an office action explaining its legal reasoning for why it believes there is a likelihood of confusion among the trademarks. While this action increases the complexity of a response to the office action, it is not always a death sentence for your application. In many cases, we can successfully argue for registration by making a counterargument. The counter-argument might be successful, in which case the application will continue in the process.

We can appeal that decision to the Trademark Trial and Appeal Board if the argument is unsuccessful. Of course, all of this may entail significant expense. Sometimes, the cost of rebranding would be cheaper than the cost of fighting an appeal.

Keeping Track of Your Trademark

Once your trademark is officially approved and yours, you will need to keep track of it! The trademark must be renewed five years later and regularly thereafter. However, as long as the trademark is continuously used in commerce, it never expires. Your lawyer will be prepared to contact you on the first day of year five of your trademark, and you have that full year to submit the required paperwork.

Should you have any questions on the trademark process, you can contact us anytime here.