Frequently Asked Questions

What are the procedures for U.S. trademark registration?

The USPTO offers applicants three primary options as the underlying basis for pursuing and obtaining registration:

A. Use-based Applications

A separate application must be filed for each mark an applicant wishes to register. In addition, if an applicant wishes to register more than one version of the same mark (i.e., a stylized or graphic version), a separate application must be filed for each version. The application must clearly identify the specific goods and services for which the registration is sought. It must also state whether the applicant has actually used the mark in commerce or has a bona fide intent to use the mark in commerce.

Use in commerce is defined by statute as “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. In a use-based application, the goods must be transported from one state to another (interstate commerce) or between the U.S. and some foreign country, or used and sold in some territory controlled by the U.S. The registration procedures vary somewhat depending on whether the applicant files a used-based or intent to use application.

The procedure for obtaining registration for a use-based application includes:  

1. Filing a trademark application, including a statement of use and one specimen;
2. Examination of the trademark application by the U.S. Patent and Trademark Office (“USPTO”) to determine:
   1. That the mark acts as a mark, or is capable of becoming a mark; and
   2. That the mark does not conflict with any previously registered mark.
3. Publication for opposition as to mark found registrable by Examining Attorney;
4. Opposition period for persons who believe they would be damaged by the registration to oppose or file an extension of time to oppose; and
5. Issuance of registration – about two to four months after close of opposition period.

B. Intent to Use Applications

The procedure for registration based on an intent-to-use application differs somewhat from a use-based application, and can be summarized as follows:  

1. Filing a trademark application, including a declaration of bona fide intent to use the mark in commerce on specific goods or services;
2. Examination for registrability and, if acceptable, publication for opposition;
3. Issuance of notice of allowance following expiration of opposition period; and
4. Submission of a statement of use within six months of notice of allowance. Extensions of time for an additional thirty months may be obtained.

For further reference, flow charts summarizing the registration process for both use-based and intent to use applications can be found at the following link: Application Process Flow Charts.

C. Applications Based on Foreign Applications or Registrations

The third basis for registration in the United States is an applicant’s ownership of a home country registration for the identical mark covering the same goods as claimed in the U.S. application. This basis can include the applicant’s claim of priority relying upon a prior-filed foreign application (in which case the U.S. application must be filed within 6 months of the filing of the foreign application); and/or the applicant’s prior home country registration.

Although an applicant may claim an earlier filed foreign application as a basis to obtain a priority date, the USPTO requires that any applicant claiming the benefit of a foreign registration must establish a “country of origin” in the country which has issued or will issue the relevant foreign registration. The country of origin is defined as any country in which the applicant has a bona fide and effective industrial or commercial establishment, or if the applicant has no such an establishment, the country in which the applicant is domiciled.

Please contact us if you have any questions or would like more information about the U.S. trademark registration process.