Online U.S Trademark Registration - An Overview

A trademark, which protects the brand name of a business, can include a word, symbol, logo, or any combination used to distinguish the respective products and/or services from the similar ones in the market.

Trademark protection is territorial and exists only within the boundaries of a country where the trademark has been filed. Entities looking at expanding their businesses internationally must ensure that their trademark is adequately protected in the respective countries where they intend to start their business.

One of the economically leading countries, the United States of America has its own Federal Law and respective State Laws pertaining to trademarks, and a centralized governing authority called as the United States Patent and Trademark Office (USPTO).

Why register a US trademark? Benefits

US trademark registration offers the following benefits to the business:

  • Legal ownership throughout all states in the US
  • A USPTO trademark registration confers the highest degree of protection for a brand name
  • Exclusive usage rights
  • Right to refrain others from using the trademark
  • The trademark gets listed on the USPTO Trademark Database (Trademark Electronic Search System, or TESS)
  • Right to use the ® symbol
  • A USPTO trademark registration increases the valuation of the brand name as well as the business
  • Rights to take legal action against infringers and counterfeits
  • A USPTO trademark registration provides legal authenticity to the brand and the business, which in turn would increase the customer base

How to register a trademark in the US

Prior to filing a US trademark application, you must check whether the intended mark is available to register. This can be done through online Trademark search in the USTPO database.

US Trademark search

The USPTO's Trademark Electronic Search System (TESS) database displays all the registered trademarks and pending trademark applications at one place. You can do a free online search to find if there are any existing, identical marks that may likely cause confusion to the proposed mark. To understand how this works, it is important to know:

1. How to perform a thorough US trademark search

The applicants can use any of the three search options, namely Basic word mark search, design mark search and combination of word and design mark search by specifying the “Search term”. All the trademarks related to the specified term will be pulled up at once.

2. How to read the results

When a particular result is clicked the following details will be displayed:

  • US Serial number
  • Mark type
  • Description
  • Status - whether pending or active
  • Owner’s name, address and entity type
  • Prosecution history
  • Proceedings, if any
And so on.

Vakilsearch trademark professionals and US Trademark Attorneys will help clients understand the results and offer the appropriate advice.

Identification of class

The USPTO has classified all the goods and services under 45 classes, under which the trademarks have to be registered. These classes are also called as NICE classification (NCL). For example, all musical instruments fall under Class 15; Class 14 contains all precious metals and their alloys, precious stones, etc.

The class has to be identified based on the product or service.

Preparing a US Trademark application

The trademark application must include the following details:

Applicant’s details:

The type of business entity - LLP, Private Limted, or LLC, business name and contact details like email address and mobile number.

Format of mark:

The intended mark could of three formats:

Standard character format:

This format is when the mark consists of words, letters, numbers or combinations without no specific designs and font styles.

Special character format:

If the mark contains any stylized words or numbers in particular typeface, colour and styling as in “Google”, “ebay”, “Kellogg’s” then it would be of special character format.

Sound mark:

Sound marks are for businesses who want to register their jingles and chimes. For example, Intel’s five-note logo.

Specimen of use

As part of the US trademark registration process, the next step is to provide a specimen of your work, i.e. a drawing of the mark that gives a visual deception of how it looks and how well is it connected with the products/services you offer. The specimen must be submitted in supporting documents like

Trademark specification

The intended trademark’s specifications must carefully be drafted to include all the products/services your business offers. It should be as per the acceptable entries of the ID Manual of USPTO, which contains the list of acceptable identification of goods and services. If there is already an accurate description of the products or goods and services it can be used, else the description has to be given in your own words.

Trademark Filing Basis (SEC. 1A, 1B, 44D, 44E)

As per the Trademark Law, the “filing basis” must include on which basis the trademark or service mark has been filed with the USPTO. It could be one or more basis, depending on the requirement.

The four bases are:

Use in Commerce: This basis is if the mark is being used for trade of goods/services across different states and countries or within one state.

Intent to Use: As the name suggests if you “intend” to use the mark in trade and commerce in the near future, maybe within four to five years, it can be filed on this basis.

Foreign Application basis under Section 44(d): If you are looking to register the foreign application that has already been filed within 6 months.

Foreign Registration basis under Section 44(e): If the mark already has a foreign registration, the relevant information along with the certificate has to be submitted.

Filing of US trademark application


Step 1: Filing of application

Once the application is prepared with all the essential details, it is filed with the USPTO and an official filing receipt along with the serial number is issued. The real-time status of the filed trademark can be tracked at http://tsdr.uspto.gov/ using the serial number.

Step 2: Trademark examination

Upon filing the application, within the next three months it will be assigned to the Trademark Examiner or Trademark Attorney, who will investigate the application for substantive grounds of objection (similarity with other marks, etc.).

Step 3: Trademark Office Action

If any informality and/or substantive ground of objection is found during the examination, an Office Action notice will be issued. You have 6 months time period to file a reply to the Office Action and remove the respective informality and/or respond to why the substantive ground of objection must be waived.

Step 4: Publication of trademark action

In the event of no informality and/or objection, or once a response to the Office Action has been filed and the same is duly accepted by the Examiner, your trademark application shall be approved for publication in the respective Trademark Official Gazette. The Gazette lists all the newly published marks renewed and cancelled marks. A prior Notice of Publication shall be issued by the USPTO stating the date of the publication of the trademark application.

Step 5: Trademark opposition period

Within 30 days from the date of publication of the trademark application in the Trademark Official Gazette, any third party and other trademark owners may oppose that your mark is similar to their brand and/or may cause commercial or economic harm to them. In such a case, they can also file for an extension of time for a period of maximum 180 days for filing an opposition against the trademark, subject to the approval from the USPTO.

In the event an opposition is filed within 30 days or the extended time period, the respective opposition proceedings shall be initiated.

Step 6: Trademark registration

If no opposition arises during this period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance.

Within 6 months from the date of issuance of the notice, the applicant must file the Statement of Use (SOU) with the proof of actual use of the trademark. The applicant has a provision for filing extension of time every 6 months once (not exceeding 36 months from the date of Notice of Allowance) to file the SOU.

If no SOU or extension is filed, the USPTO shall abandon the trademark application. Once the SOU is filed, the USPTO shall review the same and may either approve the SOU or issue Office Action requiring for further clarification. On successful acceptance of the SOU, the trademark will be registered and the USPTO shall issue the corresponding Registration Certificate.

US trademark validity:

The trademark once registered shall be valid for a period of 10 years from the date of application

Information/Documents required for US trademark

  1. Name of the applicant, address and type of entity along with the applicant’s signature and verification
  2. Identification of relevant goods and services
  3. The filing basis
  4. Specimen or drawing of the intended mark. Video clips or audio files if it is a sound mark
  5. Description of the mark
  6. Filing fees

Why Vakilsearch?

Legal support on US Trademark Search

Besides just conducting a US trademark search, our expert panel of lawyers offers legal advice on the possibilities of objection/opposition by third parties. A trademark is not only the business identity but also a valuable asset with quite a lot of financial investments, safeguarding the trademark at the very first stage of the application becomes extremely vital.

Identifying the class of product/service

We provide legal assistance in identifying the accurate class for the filing based on the products and/or services offered by your business.

For instance, the manufacturing of cosmetics and its distribution (retail/wholesale) would not fall under one class, rather it would be two different classes.

US trademark filing basis

Our professionals provide you with a thorough understanding of the various US Trademark Filing Basis options available with the USPTO and help you choose the appropriate US trademark Filing Basis for your business. Not only that we also offer comprehensive advice on the corresponding requisites for each filing basis, that need to be complied with.

Specimen of use

The USPTO follows stringent norms regarding the specimen of use submitted for an application filed claiming use. Our expert panel of US attorneys provides insightful and illustrative advice on the appropriate and the acceptable specimen of use.

Regular updates on notifications

We keep a close watch on the day-to-day status of the trademark application in the USPTO database. Our team sends regular notifications to you as and when required and duly advice the further course of action.

US trademark maintenance

Our obligation towards your trademark does not end with its successful registration, and we offer all US Trademark Maintenance services, including monitoring the registration status, any updates that your company make with regard to address or entity type.

FAQs on USA trademark


No, trademark, copyright and patent are the different types of Intellectual Property Rights. A trademark protects the brand name of a business, which can be in the form of a word, logo, tagline, etc. Copyright protect the original work of an author and Patent protects an invention.
No, a company/business registration name is the corporate name of an entity that is duly incorporated in the respective State. For instance, Apple Inc. is the company name and “Apple” is the registered trademark of Apple Inc.
Once a trademark application is filed, the USPTO issues a Serial Number, using which the real-time status and documents can be viewed on Trademark Status & Document Retrieval (TSDR) at the following link- http://tsdr.uspto.gov/.
Besides the informalities found in the trademark application, the Examiner may also issue an Office Action based on grounds of similarity between marks and/or on grounds of descriptive of the trademark.

An objection on grounds of Similarity of marks indicate that the Examiner has found your trademark to be confusingly similar (phonetic, visual, structural similarity) to one or more trademarks that already exists and are listed on the USPTO Trademark Database.

Objection on grounds of descriptive of the mark indicate that the trademark applied for is not distinctive enough, or lacks distinctiveness.
Generally, non-distinctive marks cannot be easily registered and would face several objections, unless the applicant proves that the mark is inherently distinctive or has acquired distinctiveness by virtue of long, continuous and extensive usage.
In most cases, Inherently distinctive marks get hasslefree registration.
There are 3 category of marks that are considered to be Inherently Distinctive:
1. Fanciful marks
2. Arbitrary marks
3. Suggestive marks

Fanciful and arbitrary marks are the strongest form of marks that would be considered as highly inherently distinctive and easily registerable.
Fanciful trademarks refer to marks formed using coined or invented words/terms, that do not have any meaning or cannot be attributed to a known meaning. Fanciful trademarks are the strongest kind of trademark and generally a fanciful trademark glides through the registration without any objections.

For instance- Pepsi is a fanciful trademark as it is a coined word.
Arbitrary trademarks are formed with terms/words that although have a dictionary or a known meaning, but that meaning is not directly associated or linked with the products and/or services offered by the said trademark.

For example, the trademark- Apple, used by Apple Inc. for computer hardware and software is an Arbitrary trademark as the general meaning connoted to “Apple” is a fruit and it has no connection with computers and software.
As the name implies, Suggestive trademarks only indirectly suggest and not directly describe or give reference to the products and/or services offered by the said trademark. For instance, MICROSOFT is a suggestive trademark as the mark indirectly suggests and refers software used for microcomputers such as desktops, laptops, etc.

Suggestive trademarks are not considered as the highest category of distinctiveness, which is conferred to Fanciful and Arbitrary marks.
Descriptive and Generic trademarks are the weakest trademarks and would not be allowed registration or would have numerous hindrances in its registration which in turn would be an expensive affair.
Descriptive marks are those which directly associate and describe the products and/or services offered by the said trademark. Similarly, Generic marks are those marks, which have a common dictionary or known meaning and that meaning is directly associated with the products and/or services offered by the said trademark.
For an application filed on "Intent-to-use" basis, if no oppositions are filed either within the opposition period or the extended time, the USPTO issues a Notice of Allowance (NOA) which indicates that the trademark has been allowed, however, in order to register the mark, the applicant must submit the Statement of Use (SOU) within 6 months (extendable to maximum 36 months) from the date of issuance of the NOA.
Having a registered trademark is vital for any business to operate. Registered trademark not only is a value addition to the business/brand, but also is a sign of authenticity of the products/services. If you do not have a registered trademark, you cannot prosecute against or take legal action against anyone trying to infringe your trademark.
If a trademark is abandoned by the USPTO, it can be revived by the Applicant by filing a Petition to Revive, based on the reason for abandonment. Such petitions should generally be filed within 2 months from the date when the Notice of Abandonment was notified.
From the date of filing the application, the registration process takes nearly six to nine months, provided there is no opposition and objection.
The application will be reviewed for completeness and compliance with the registration requirements.
Yes. Registered trademarks must be renewed once in every 10 years. Also, on the fifth and sixth anniversaries of registration, you need to file a statement of use and a specimen, proving the usage of the existing mark in US commerce.
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