At Lewellyn Law, PLLC, we guide businesses and entrepreneurs through every step of the trademark process. Whether you’re currently using your mark in commerce or plan to launch your brand in the near future, registering your trademark with the United States Patent and Trademark Office (USPTO) is a valuable way to protect your brand and establish nationwide rights.
This post walks you through the trademark process for both use-based and intent-to-use applications—from selection to registration.
1. Trademark Selection and Clearance
The first step is selecting a strong and legally protectable trademark. Marks that are distinctive—such as coined or arbitrary words—offer the greatest legal protection. Descriptive terms, geographic names, or common surnames are harder to protect and often face registration hurdles.
Once a mark is selected, a trademark search should be conducted to assess the risk of conflict with existing trademarks. This search may include:
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A knockout search of the USPTO register
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A comprehensive search covering federal, state, common law, and internet uses
Our firm performs detailed clearance searches to help you avoid legal disputes and costly rebranding later.
2. Filing the Trademark Application
Once the mark is cleared, we prepare and file a trademark application with the USPTO. The application must include:
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The applicant’s information
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The mark itself (word mark or logo/design)
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A list of goods or services associated with the mark
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The filing basis—either:
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Section 1(a): Use in Commerce (you are already using the mark in connection with goods/services)
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Section 1(b): Intent to Use (you have a bona fide intent to use the mark but haven’t yet started)
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If filing under Section 1(a), you must submit a specimen showing actual use of the mark in commerce. If filing under Section 1(b), no specimen is required at filing.
3. USPTO Examination and Office Actions
After filing, the application is assigned to a USPTO examining attorney who reviews it for compliance and potential conflicts. The examiner may issue an Office Action if there are any problems—such as:
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Likelihood of confusion with a prior registration
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Descriptiveness or genericness
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Improper specimens or classifications
We review and respond to Office Actions on your behalf, advocating for your mark's registration.
4. Publication for Opposition
If the application is approved, it is published in the Official Gazette for a 30-day opposition period. During this time, third parties may oppose the application if they believe it conflicts with their existing rights.
If no opposition is filed—or if an opposition is unsuccessful—the application proceeds to the next step.
5. Registration or Notice of Allowance
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Use-Based Applications (Section 1(a)): If no opposition is filed, the USPTO will issue a registration certificate, typically within 11–12 months of filing.
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Intent-to-Use Applications (Section 1(b)): If the mark passes publication, the USPTO issues a Notice of Allowance (NOA). You then have 6 months (and up to five 6-month extensions) to file a Statement of Use (SOU), showing that the mark is now being used in commerce.
After the SOU is accepted, the USPTO issues the registration certificate.
6. Post-Registration Maintenance
Trademark rights can last indefinitely—but only if you meet certain maintenance requirements:
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File a Section 8 Declaration of Continued Use between years 5–6
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File a Section 15 Declaration of Incontestability (optional but highly recommended)
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Renew registration every 10 years (with combined Sections 8 & 9 filings)
Failing to file on time can result in cancellation of your registration.
Why Register Your Trademark with Lewellyn Law, PLLC?
Registering a trademark is a legal process that requires experience, precision, and strategy. At Lewellyn Law, we:
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Provide thorough clearance and risk assessments
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Handle USPTO filings and responses to Office Actions
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Protect your brand from infringement and misappropriation
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Track deadlines and handle post-registration filings