To protect your brand nationwide, you’ll need to know how to get a federal trademark. This guide walks you through the key steps: understanding the benefits, conducting a thorough search, and filing your application. It covers the entire process of obtaining a federal trademark, from the initial search to final registration. Let’s get started.
Key Takeaways – How To Get A Federal Trademark
- Federal trademark registration provides legal recognition and exclusive rights, helping businesses protect their brand and contest infringement more effectively.
- Conducting a thorough trademark search is essential to avoid conflicts with existing trademarks, saving time and potential legal disputes.
- Accurate preparation of the trademark application, including class identification and proper descriptions, is critical to avoid denial and ensure successful registration.
Understanding the Importance of Federal Trademark Registration
Federal trademark registration provides nationwide legal recognition of ownership of the trademark, offering exclusive rights to trademark owners. This means you can prevent others from using similar marks that could confuse consumers and dilute your brand’s value. It also allows you to bring legal actions in federal court, which significantly enhances your ability to contest infringement and protect your brand.
Unlike patents (which protect inventions) or copyrights (which protect creative works), trademarks specifically protect brand identifiers. A corporation, as a formal legal entity, can own a trademark and benefit from federal registration. Simply registering a business name or domain name won’t give you trademark rights – only using a name/logo as a brand does, and federal registration greatly strengthens those rights. While you do gain some common-law rights by using a mark in commerce, those are limited to your local area.
With the competitive landscape becoming increasingly crowded, protecting your brand early has never been more critical. The USPTO has seen a surge in filings in recent years, meaning that unprotected names are increasingly likely to conflict with existing brands, potentially forcing costly rebranding efforts down the road.
Registered trademarks offer several legal advantages:
- They come with a presumption of ownership in court, shifting the burden of proof to challengers.
- This legal advantage can save you time and resources if disputes arise.
- Federal registration facilitates the right to block the import of infringing goods through U.S. Customs, adding another layer of protection for your brand.
Trademarks protect brand names, logos, and taglines. Service marks, which identify and distinguish services rather than goods, can also be registered for federal protection.
One of the most visible benefits of federal trademark registration is the ability to use the ® symbol, signifying that your mark is federally registered. After five years, your trademark can achieve ‘incontestable status,’ providing enhanced legal protections that make it even harder for others to challenge your rights.
The Investment Value of Trademark Protection
Securing a trademark is also a smart move when it comes to growth and investment. Investors and partners view IP ownership as a sign of a company’s legitimacy and forward-thinking approach. Research has found that early-stage startups that filed for trademarks were significantly more likely to attract venture funding than those that didn’t. Studies show that startups with both patents and trademarks at the seed stage were 10 times more likely to secure funding; even having just a trademark made a startup about 4 times more likely to raise capital compared to those with no IP filings.
Determine Your Need for a Trademark
Determining your need for a trademark is a critical first step in the trademark application process. If you have a unique business name or business names, logo, or brand name that you want to protect from unauthorized use, federal trademark registration is a valuable tool. Not only does it provide exclusive rights, but it also strengthens your legal standing if you need to sue for infringement.
Trademarks are intended to identify the source of goods or services – commonly brand names, logos, and taglines that set your business apart. For example, a federal registration gives you nationwide priority – even in areas where you haven’t yet done business – which can ward off competitors anywhere in the U.S. who might adopt a confusingly similar name.
Make sure your mark is actually eligible for trademark protection. Not every name or phrase qualifies. Generic names (like calling a tech company “Computer Inc.”) or purely descriptive terms (like “Cold Ice Cream” for an ice cream brand) usually cannot be registered because they aren’t distinctive. Unique, coined, or fanciful brand names are easiest to protect, while common terms or phrases that just describe your product may be refused registration for lacking distinctiveness.
Conducting a Trademark Search
Before diving into the trademark application process, conducting a thorough trademark search is crucial because:
- It helps ensure that your trademark doesn’t conflict with existing marks, potentially preventing application rejection.
- It can save you time and money.
- A comprehensive search can reveal similar trademarks used in related industries.
- This is essential for avoiding infringement and costly legal disputes.
The most common reason trademarks get refused is because they conflict with an existing mark. For example, a new coffee brand named “Starbuckz” would be rejected as too close to “Starbucks.” A thorough search can uncover these conflicts before you invest in a filing.
While basic internet searches can be a starting point, they often miss similar marks that could pose problems. The USPTO’s Trademark Electronic Search System (TESS) is the primary tool used to perform a detailed trademark search. This system allows you to search for existing trademarks and assess potential conflicts. Examining potential trademark confusion relies on the likelihood of confusion test, which considers factors like the similarity of the marks and the relatedness of the goods or services.
Beyond the USPTO Database
Your search shouldn’t stop at federal registrations. Not all trademark use is in the federal register—someone could be using a similar name without a federal registration (common-law trademark rights), which can still pose a legal conflict. While the USPTO won’t reject your application based on unregistered marks, these prior users can still oppose your application or claim infringement if they were using the mark first. To reduce that risk, search broadly online, check domain name availability, social media handles, state trademark databases, and even local business listings.
Professional Search Considerations
For very important brand names, many companies hire trademark attorneys or search firms to do in-depth clearance (including checking translations, international databases, etc.). Professional trademark attorneys typically perform a “clearance search” that covers federal trademarks, state trademark records, and common-law uses. Such a comprehensive search can reveal conflicts that a quick USPTO lookup might miss, potentially saving you from expensive legal battles or forced rebranding.
Evaluate Your Mark’s Strength
While searching, also critically evaluate if your chosen name or logo is actually trademarkable. Generic or purely descriptive names cannot be registered because they lack distinctiveness. The strongest trademarks are “fanciful” terms (e.g., “Kodak” for cameras or “Pepsi” for soda) or arbitrary names unrelated to the product (e.g., “Apple” for computers). If your name describes a quality or feature (“Speedy Delivery Service”), be aware the USPTO may refuse it as descriptive, or at best it might end up on the weaker Supplemental Register.
Conducting a professional trademark search may require additional resources, but it’s a worthwhile investment to ensure the uniqueness and protectability of your trademark. Thoroughly checking for existing marks reduces the risk of legal challenges down the line.
Identifying the Correct Class of Goods and Services
Choosing the correct class of goods and services is a pivotal step in the trademark registration process. The United States Patent and Trademark Office (USPTO) classifies goods and services into different categories, each requiring its own fee. This classification determines the legal framework for your trademark protection, so it’s essential to get it right.
The USPTO categorizes goods and services into 45 international classes (for example, Class 25 for clothing, Class 9 for downloadable software, etc.). The USPTO offers a comprehensive list of classes through their Identification of Goods and Services Manual (ID Manual). This resource is designed to assist applicants. Goods and services are never categorized within the same international class, ensuring clear distinctions between different types of products and services.
Trademark Classifications for Tech Founders
For tech founders, understanding trademark classifications is an essential step in protecting your innovative products and services. There are 45 classes in total—34 for goods and 11 for services. For example, software applications and downloadable programs typically fall under Class 9, while online advertising and business management services are generally classified under Class 35. If your startup offers cloud computing or software-as-a-service (SaaS), selecting the correct class ensures your trademark covers those specific tech offerings.
Choosing the right classification is critical because each class requires a separate filing fee, and incorrect classification can lead to delays or gaps in protection. If you can’t find a suitable description in the ID Manual, you can suggest new identifications for your goods or services to the USPTO.
Accurately identifying and classifying your goods and services is crucial for the successful registration of your trademark.
Preparing Your Trademark Application
Preparing your trademark application involves several detailed steps to ensure compliance with legal requirements and the accuracy of the information provided. This phase includes:
- Choosing the type of mark
- Creating a drawing and specimen
- Describing your goods or services
Be sure to provide accurate contact information, including your mailing address, email, and phone number, in your application to facilitate communication and legal process management. Each of these steps is crucial to avoid application denial and ensure that your application meets all necessary criteria.
The Importance of Accuracy in Your Application
Accuracy is essential when preparing your trademark application. Every detail you provide—whether it’s your business name, the description of your goods and services, or the class under which your mark falls—must be correct and consistent. Mistakes or omissions can slow down the trademark registration process, lead to additional costs, or even result in the rejection of your application.
The USPTO provides detailed form instructions and even webinars on how to fill a trademark application to help ensure accuracy and completeness.
Choosing the Type of Mark
When choosing the type of mark for your trademark application, you have several options, including:
- Standard character marks: Protect the textual representation of a brand name without regard to font, style, or design, offering flexibility in how the mark is used.
- Special form marks: Such as logos or stylized designs, protect the visual appearance of a mark and are ideal for distinctive logos and graphics.
- Sound marks: Identify products or services through unique sounds and can be registered if they serve a trademark function.
Each type of mark serves different branding needs, so it’s important to choose the one that best represents your brand identity and provides the desired level of protection.
Capturing the best Specimen
A specimen shows how your trademark is actually used in commerce and is a required part of the application. It must be a real example—not a mockup—demonstrating how consumers encounter your mark in connection with your goods or services.
For goods, acceptable specimens include product labels, tags, packaging, or photos of the product itself with the mark displayed. For services, specimens can include website screenshots, advertisements, or brochures that show the mark used in selling or advertising the services.
Choosing the right specimen is critical. Submitting something that doesn’t clearly tie the mark to the goods or services can result in rejection and delay your registration.
Describing Your Goods or Services
Accurately describing your goods or services in your trademark application is essential to avoid vague descriptions that could lead to application denial. The USPTO’s ID Manual provides a list of acceptable identifications for goods and services. If no suitable description is found in the manual, you must provide your own accurate description using clear and precise language.
Using the manual ensures consistency and clarity in your application, but if you need to describe your goods or services in your own words, make sure it aligns with the USPTO guidelines. Accurate descriptions help in clearly defining the scope of your trademark protection and avoiding potential issues during the review process.
Selecting the Filing Basis
Selecting the appropriate filing basis for your trademark application is critical to ensure it meets the USPTO’s requirements. U.S. trademark applications generally require you to specify a “basis” for filing:
- Use in Commerce (Section 1(a)): Requires that the mark is currently used in commerce related to the goods or services listed in the application. You’ll need to prove current use by submitting a “specimen.”
- Intent to Use (Section 1(b)): Allows you to file for a trademark even if you have not yet used the mark in commerce, but you must eventually prove use. Applications based on intent to use require additional steps before registration, including showing actual use of the mark.
The Intent-to-Use basis lets you secure a priority date for your mark before actual use, but it will not register until you later show proof of use. An intent-to-use (ITU) application allows you to secure a “place in line” for the name. After the USPTO approves the mark, you’ll file a Statement of Use (proof of use) and pay an additional fee (currently $100 per class) to complete registration.
If you are not yet ready to use the mark in commerce when the Statement of Use is due, you can file extension requests to delay the submission. Each extension request grants an additional six months, and you can file up to five extension requests before you must submit the Statement of Use.
Multiple filing bases can be included in the same application, but they must be clearly identified and meet their respective requirements.
Submitting Your Trademark Application
Submitting your trademark application involves using the Trademark Electronic Application System (TEAS), which generally ensures faster processing compared to paper submissions. The USPTO Trademark Center is the online platform where applicants can submit and manage their trademark applications, as well as upload required specimens.
Understanding the current fee structure is crucial for budgeting. The application filing fee is a required initial cost that must be paid when submitting your application, and the fee amount depends on the chosen application form (TEAS Plus or TEAS Standard) and the number of classes selected.
Updated Fee Structure (2025)
The USPTO is in the process of simplifying their application system. Beginning in 2025, they are moving to a single application form with a base fee of $350 per class and additional surcharges if you don’t meet certain requirements. Currently, there are usually two versions of the form:
- TEAS Plus: Has a lower fee ($250 per class as of 2023) but comes with stricter requirements – you must use pre-approved descriptions of goods/services and complete the form fully with no custom language.
- TEAS Standard: Gives more flexibility (you can write your own descriptions), but costs more ($350 per class).
For startups on tight budgets, if you found exact matches for your goods in the ID Manual, TEAS Plus is a good way to save money. However, all fees are non-refundable, so double-check everything before you submit.
Filing Process
To submit your application:
- Create a USPTO.gov account: You’ll need to create a free account on the USPTO’s website (via the MyUSPTO system) to access the electronic application forms.
- Access the TEAS application form: Select the form that best fits your situation based on your needs and budget.
- Fill in the application details: Provide applicant information, trademark details, goods and services, filing basis, and all required documentation.
- Pay the filing fee: Trademark application fees are charged per class of goods/services and are non-refundable.
- Receive confirmation: After payment, you should get an immediate confirmation with your serial number.
The submission process includes uploading your application to the Trademark Status and Document Retrieval system within four to five business days. Remember, thoroughness is key since the application fee is non-refundable if the application is rejected.
Understanding the Examining Attorney’s Role
Once your trademark application is submitted, it is assigned to an Examining Attorney at the USPTO. This legal professional is responsible for reviewing your application as part of the trademark registration process.
As of late 2023, the average wait to receive an examiner’s first review (called a “first Office Action”) is about 8 to 9 months. This delay is due to a recent surge in filings and limited staffing, but the USPTO is working to reduce the backlog. You can monitor the status of your application using the USPTO’s TSDR system (Trademark Status and Document Retrieval) by entering your serial number. You can also use the USPTO’s online systems and resources to track your application’s progress and access important documents.
The Examining Attorney examines your mark to determine if it meets all legal requirements and checks for any conflicts with existing trademarks. If they identify any issues—such as incomplete information, improper classification, or potential conflicts—they will issue an Office Action detailing the problems that need to be addressed.
What Happens After You File?
Once your trademark application is filed, the trademark filing process is as follows:
- The application is reviewed by an examining attorney for any issues.
- If the examining attorney finds problems, an office action will be issued, requiring a response from you.
- If there are no issues, the application will be published in the Trademark Official Gazette.
- This publication initiates a 30-day opposition period where others can challenge your trademark.
When a Trademark Examining Attorney reviews your application, there are two main outcomes:
- Approval for Publication: If the examiner finds no issues with your application, they can approve it for the next phase (publication). This is the best-case scenario but not extremely common for initial review.
- Office Action: In most cases, the examining attorney will issue an Office Action explaining any problems with your application.
If your application is rejected or opposed, you have the right to appeal the decision through the USPTO’s legal process.
Responding to an Office Action
Receiving an Office Action from the Examining Attorney is a common part of the trademark filing process. An Office Action outlines any issues identified with your trademark application, such as the need for clarification, additional evidence, or changes to your filing basis.
New Response Deadlines
Important update: Starting in December 2022, the USPTO gives applicants 3 months to respond to most office actions (a change from the old 6-month period). You can request a one-time 3-month extension if needed, but that comes with a fee (currently $125). Failing to respond by the deadline will result in your application being abandoned.
The Value of Professional Help
This is a stage where having a trademark attorney’s guidance can be very valuable. The USPTO strongly encourages even U.S. applicants to consider hiring an attorney specializing in trademark law. Empirical data has shown that trademark applications filed with the help of an attorney have significantly higher success rates than those filed by applicants on their own.
You can submit your response online through the USPTO’s Trademark Electronic Application System (TEAS). It’s important to carefully review the Office Action and ensure your reply is thorough and accurate, as failure to respond will result in your application being abandoned.
Publication and Opposition
After your trademark application has successfully passed examination and any Office Actions have been resolved, your mark will be published in the Trademark Official Gazette, a weekly online publication that lists marks pending registration. This publication serves as public notice that your mark is being considered for federal trademark registration.
During the 30-day opposition period, other trademark owners have the opportunity to file an opposition if they believe your mark may infringe on their legal rights. An opposition is essentially a legal challenge where the other party argues why your mark shouldn’t be registered. This proceeding takes place before the USPTO’s Trademark Trial and Appeal Board (TTAB).
For many startup applicants, no opposition is filed, especially if you did thorough research during your initial search. But larger companies do monitor filings and will object if they feel a new registration would encroach on their brand.
If an opposition is filed, you will have the chance to respond and present your case to the USPTO’s Trademark Office. If no one opposes your mark within 30 days, or if any opposition ends in your favor, your application moves forward to the final stage.
Registration Process
What happens next depends on your filing basis:
If you filed under “use in commerce” (Section 1(a)):
Assuming no opposition, the USPTO will proceed to register your trademark. The USPTO will issue your Registration Certificate (electronically, and a paper certificate by mail in many cases). It typically takes about 3-4 months after publication to get the official registration notice. Your trademark is now registered on the Principal Register!
If you filed under “intent to use” (Section 1(b)):
The process has an extra step. About 6–8 weeks after the 30-day publication period ends (assuming no opposition), the USPTO will issue a Notice of Allowance (NOA). This notice essentially says “your trademark is allowed, but not yet registered because we need proof of use.”
From the date the NOA is issued, you have 6 months to either:
- File a Statement of Use (SOU): This form (with a fee of $100 per class) requires you to submit evidence that you have started using the mark in commerce. Once the USPTO reviews and accepts your SOU, they will grant the registration.
- Request an Extension of Time: If you’re not ready to use the mark in commerce within that initial 6-month window, you can file for a 6-month extension (at a fee of $125 per class for each extension). You can typically file up to five extensions (totaling 30 additional months) if justified.
Maintaining Your Trademark Registration
Maintaining your federal trademark registration requires continued use of the trademark in commerce and timely filing of maintenance documents. Unlike patents or copyrights, a trademark registration doesn’t expire after a set term if you keep it alive.
Use Requirements
U.S. trademark rights are based on use. After registration, you should continue to use your trademark in commerce for the goods/services listed. Non-use of a mark for too long (usually 3 consecutive years is considered presumptive abandonment) can jeopardize your rights.
Required Maintenance Documents
- A Declaration of Use (Section 8) between the 5th and 6th year after registration
- A combined Declaration of Use and Application for Renewal (Sections 8 & 9) between the 9th and 10th year after registration, and every 10 years thereafter
In these filings, you’ll declare that the mark is still in use and provide a current specimen showing use. As long as you file these on time, your registration can be renewed indefinitely. If you miss these deadlines or stop using the mark, your registration will be cancelled. The USPTO does not send reminder notices, so it’s important to calendar these dates.
Protecting Your Rights
Registration in hand, you should also be vigilant about others infringing your mark. The USPTO’s job is largely done once you’re registered – they don’t police the marketplace for you. It becomes your responsibility to monitor for unauthorized use of similar marks that could confuse consumers.
Scam Warning: Shortly after registration, you might receive official-looking mail or emails asking for additional fees for “renewal” or “monitoring.” Many are scams – the USPTO will only correspond through uspto.gov email or letters that you know are coming.
After Registration: What to Expect
Once your trademark is registered, you will receive a registration certificate from the USPTO, officially recognizing your exclusive rights to use the mark in commerce. Your federal trademark registration is valid for 10 years, but to maintain your rights, you must file renewal applications and pay the required filing fees before the registration expires.
At that point, your trademark name or logo can be followed by the ® symbol (only after registration, not before), and you have the full benefits of federal protection. Continued use of your trademark in connection with the registered goods and services is essential to keep your registration active.
Should You Hire a Trademark Attorney?
You might be asking: Do I really need a lawyer for this? The trademark system is designed to allow DIY filings, and many startup founders do successfully file on their own, especially for straightforward marks. U.S. applicants are not required to have an attorney – if your domicile is in the United States, you can file pro se (on your own). (Foreign-domiciled applicants are required to hire a U.S.-licensed trademark attorney to represent them at the USPTO.)
However, the USPTO strongly encourages even U.S. applicants to consider hiring an attorney specializing in trademark law. Why the encouragement? Simply put, trademark law can be nuanced, and an experienced attorney can add significant value:
- They can conduct a professional clearance search and give a legal opinion on risks
- They’ll know how to describe your goods/services in the application properly
- If an office action arises, an attorney will understand the legal grounds and how to respond effectively
- Overall, a good trademark attorney helps prevent mistakes that could cost you extra time and money
As the USPTO notes, hiring an attorney may actually save you money in the long run by getting your trademark through more efficiently and securing the broadest protection for your mark.
Empirical data has shown that trademark applications filed with the help of an attorney have significantly higher success rates than those filed by applicants on their own. One comprehensive study of USPTO filings over four decades found that applications handled by experienced trademark counsel were much more likely to be approved and register than pro se applications.
Helpful Resources for Trademark Applicants
The USPTO offers several resources to assist trademark applicants, including:
- Trademark Process Overview – comprehensive guide to steps and requirements
- Trademark FAQs – benefits of federal registration and common reasons for refusal
- Trademark Fee Information – current application, Statement of Use, and renewal fees
- Do I Need an Attorney? – guidance on legal representation
- Navigating Amazon Brand Registry Without Trademark: A Practical Guide – how to navigate Amazon Brand Registry without a registered trademark
Additionally, the USPTO’s website includes a variety of educational resources, such as trademark literature, guides, and webinars tailored for different audiences.
What are descriptive trademarks?
Descriptive trademarks are marks that directly describe a characteristic, quality, function, or feature of the goods or services they represent. For example, a brand name like “Creamy” for yogurt or “Speedy” for a delivery service clearly describes an attribute of the product or service. Because descriptive marks convey information about the product itself, they are generally considered weaker and may face challenges in obtaining federal trademark registration unless they acquire distinctiveness through extensive use and recognition in the marketplace.
Marks that are merely descriptive or generic terms for the goods usually cannot be registered because they aren’t distinctive. Understanding whether your trademark is descriptive is important because it affects the likelihood of successful registration and the level of legal protection your mark will receive.
Summary
Summarizing the key points covered, this guide has walked you through the importance of federal trademark registration, determining your need for a trademark, conducting a trademark search, and the detailed steps involved in preparing, submitting, and maintaining your trademark application. We’ve also highlighted valuable resources and the benefits of obtaining legal assistance.
The process involves multiple steps and can take many months to complete, but with proper preparation and understanding of the requirements, it’s absolutely manageable. The investment in federal trademark protection can provide lasting value for your business, offering both legal protection and competitive advantages in the marketplace.
Now that you have a comprehensive understanding of the trademark registration process, it’s time to take action and protect your brand. Secure your trademark and ensure the longevity and success of your business.
Frequently Asked Questions
What are the benefits of federal trademark registration?
Federal trademark registration provides nationwide legal recognition and exclusive rights to the trademark, allowing the owner to enforce their rights in federal court. This protection significantly enhances the ability to safeguard your brand against infringement.
How can I determine if I need a trademark?
You need a trademark if you aim to protect your brand, prevent unauthorized use, and enhance the value of your business. In such cases, filing for a trademark is advisable.
What is a trademark search and why is it important?
A trademark search is essential as it helps to confirm that your mark does not clash with existing trademarks, thereby minimizing the risk of legal conflicts and potential rejection of your application. Ensuring your trademark’s uniqueness protects your brand and investment.
How do I choose the correct class for my trademark?
To choose the correct class for your trademark, utilize the USPTO’s classification system to accurately align your goods or services with the appropriate class, as each class necessitates a separate fee. Proper classification is essential for effective trademark protection.
What happens after I file my trademark application?
After you file your trademark application, it will be reviewed by an examining attorney and published in the Trademark Official Gazette, followed by a possible opposition period before registration.
