How to Register a Federal Trademark
Registering a trademark at the federal level is a multifaceted process that takes many months to complete. Filling out and submitting the application is just one (important) piece of the puzzle.
Below, we go over what you need to know to register your mark, from how to conduct a clearance check to outlining what information is required on your application.
This article will cover:
Conduct a Clearance Check
A clearance search or check involves determining if your mark infringes on any others. If the check reveals that your mark has a likelihood of confusion with another, you may need to change yours in order to register it. But if the check doesn’t uncover any potential confusion, you’re one step closer to filing a successful registration.
While it’s an extremely important part of the trademark registration process, conducting a clearance check is not mandatory—unlike later steps, this one isn’t required by the United States Patent and Trademark Office. However, conducting a thorough and well-rounded clearance check now will likely save you time and money—and save you from disappointment later.
Because of this, having the help of a practiced trademark attorney can be particularly beneficial when conducting a clearance check.
How do I conduct a clearance check?
While your clearance check should absolutely involve searching for matches of your exact trademark, key words should expand beyond your literal trademark. Similar words, phrases, and spellings should be thrown in, since a likelihood of confusion can exist between non-identical trademarks.
Once you’ve identified key words and search terms, you’ll want to utilize the following databases, websites, and publications in your research:
USPTO’s Trademark Search
The Trademark Search is a USPTO database that contains all federally registered trademark applications—live, dead, and pending. Both word marks and design marks can be searched in the Trademark Search tool. To search for designs, you’ll need to use the USPTO’s design codes.
- Official Gazette
The Official Gazette is a monthly publication put out by the USPTO that publishes information about trademarks actively awaiting registration, as well as cancelled and renewed registrations.
- State trademark databases
States maintain databases of trademarks registered with their jurisdiction. You’ll want to search databases for all states where your business operates and you sell your goods and services. It’s also a good idea to search the states in your region, as well as any states you think you might expand to.
- Business name searches
In addition to trademark databases, states keep track of registered business names. Searching these databases may reveal names that aren’t officially trademarked, but have common law trademark rights.
- Additional research
A trademark clearance check won’t necessarily end with state and federal databases. You may also want to conduct organic internet searches to look for any conflicts that your more targeted research missed.
There’s a lot to consider when conducting a clearance check. When you sign up for our Trademark Service, we handle this important step so you don’t have to.
Fill Out Trademark Application
Federal trademark applications require a fair amount of information and attention to complete. Going into the application without an understanding of its components is tough. That’s why we’ve detailed the need-to-knows of how to apply for a trademark here.
Below is a breakdown of the information you’ll include in a TEAS Plus application. The alternative application option is TEAS Standard. (We note a main difference between application types in the Goods/Services section of this breakdown.) This information is meant to act as a general guide, and your specific situation may call for requirements we’ve not covered here.
This can be an individual or an entity, or multiples of either. You can add owners by selecting the “Add Owner” button at the bottom of the page.
Select whether you’re filing as an individual or a business entity. If filing as a business entity, you’ll select the entity type, such as a corporation, LLC, or trust.
If filing as an individual, provide the country of citizenship for each owner. If filing as an entity, provide the state and/or country where the business is organized. Some entity types may need to provide additional information. For example, those filing as a sole proprietorship will need to include the name of the sole proprietor. Those filing as a partnership will need to include the names and citizenship of all general partners.
This can be a physical address or PO Box and will be publicly viewable (as will the rest of your application information).
This is either your home address (if filing as an individual or sole proprietor) or principal business address (if filing as an entity). A domicile address is required if the mailing address you provided is not your home or business address. If you provide both mailing and domicile addresses—and they are different from each other—your domicile address will remain private. If your domicile and mailing addresses are the same, you will check a box to indicate this.
This is optional. Don’t want your phone number public? Leave it off the form! (Note that when you move to the next screen, you’ll be met with a warning if you’ve omitted the phone number. This is okay—you still don’t have to list your number if you don’t want to.)
Are faxes still a thing? Turns out they are. If you’ve got a fax number and you’re not afraid to use it, type it here.
You must provide at least one email address. Consider creating an email specifically for the trademark application (but don’t forget to keep it active and check it regularly!) if you don’t want your usual email address to be public.
Have a website for your good/service? You can provide that here, but you don’t have to.
You will select either “Standard Characters,” “Special Form (Stylized and/or Design),” or “Sound Mark.” You may select only one, and your prompts will change depending on your selection.
Note: If you own other active marks registered with the USPTO, you will indicate that and provide the registration numbers. You will also include whether you are claiming “concurrent use,” which indicates that your mark and a similar mark are able to coexist. (Concurrent use is rare, and there are additional requirements if you go this route.)
- Standard Characters: This is also known as a word mark. If this is your selection, you will type the mark into the text box. (There are additional requirements for non-English marks, marks that include non-Latin characters, and marks that include the name or likeness of a living person.)
- Special Form: If you are claiming any design elements in your mark, you will upload a JPG of the design. The file should be a black and white rendering unless you are making a specific claim to colors. Then, you’ll list the colors or check a box to say you’re not claiming any colors, type out any characters in the design, and write a detailed description of the mark.
- Sound Mark: If you’re claiming sound in your mark, upload a file of it. (Acceptable formats include WAV, WMV, WMA, MP3, MPG, or AVI.) If you’re claiming characters as well, i.e. the sound includes words, type them out. Then, describe the mark in detail.
Click the “Add Goods/Services button” to begin searching for your trademark class designation(s). Using the TEAS Plus application, you can only select from the USPTO’s goods/services descriptions. (TEAS Standard allows you to write free form.) You can add multiple goods/services. If they land in different classes, you’ll have to pay additional class fees. If they land in the same class (hooray!) you won’t have to pay extra.
Once you’ve selected your classes and goods/services, you’ll assign a filing basis for each entry. The most common selections are: Section 1(a) use in commerce or Section 1(b) intent-to-use. (If your mark has been or is in the process of being registered with another country’s trademark office, you have other selections to choose from.) You can choose different filing bases for each entry of goods/services you’ve provided, though most applicants choose the same basis for each entry. If you file under a 1(b) basis, you’ll have additional fees and paperwork to file down the line.
Specimens are examples that show your mark being used in commerce. To upload specimens, click on the hyperlink under each “Assigned Filing Basis” entry. From there, you’ll attach and describe specimens, provide website specimen information as applicable, and provide the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce. You will do this for each entry of 1(a) goods/services you’ve provided. (If you select the 1(b) intent-to-use basis for any of your goods/services, you won’t need to upload specimens for those at this time.)
You’ll verify the point of contact name and email here and have the option of adding up to four email addresses for USPTO communications to be copied to. Note that only the primary email address will be used for official USPTO correspondence.
You’ll see what’s owed on this page, but you won’t pay until the very end. If the total is higher than you were expecting, it may be because you’ve added multiple classes. You still have time to go back and change your class selection if you wish.
You will choose to sign directly, have an email sent to a second party for signature (most common if an attorney is filing the form), or to sign by pen.
Once you sign, you’ll select the “Validate” button at the bottom of the page. This will allow you to review your application prior to paying and submitting.
With few exceptions, the only way to file a trademark application with the USPTO is online. (Previously, you were regularly able to file by mail or hand-delivery. The online-only rule went into effect in 2020.)
To file online, you’ll access the Trademark Electronic Application System (TEAS) through your MyUSPTO account. The application fee is $250 for TEAS Plus or $350 for TEAS Standard, per class.
Respond to Office Actions
An office action is a refusal of your trademark application by the USPTO. Refusal sounds final, but it often isn’t. Many trademark applications are returned with office actions, and many of those applications go on to receive registration.
It typically takes longer than 8 months post-submission to receive the first office action. (Check out the current processing times.) Once received, you’ll typically have 3 months to respond (unless you request an additional 3 month extension and pay the corresponding fee).
There are two broad categories of office actions: procedural and substantive.
- Procedural office actions
Procedural office actions generally call for small, easy fixes. Maybe there’s a typo in the business name or a specimen is formatted incorrectly. While these small errors need to be responded to and fixed (as applicable) before the application can move forward, procedural office actions typically do not result in the application dying.
- Substantive office actions
Substantive office actions are a bigger deal than their procedural counterparts, typically pointing to an issue with the requested trademark itself. For example, if the mark is merely descriptive or causes a likelihood of confusion with another mark, a substantive office action may be issued. Because of the severity of a substantive refusal, legal arguments are often required in order to remedy. In some cases, the only solution may be to abandon the trademark and apply for a new one entirely.
How do I respond to an office action?
The type of response required for an office action depends on the nature of the refusal. Acceptable response mediums will be detailed in your office action letter (sent via email) from the USPTO.
Small, procedural office actions can sometimes be responded to in phone or email correspondence with a USPTO examining attorney. But most often, you’ll respond to an office action in TEAS.
Once your mark is registered, you’ll need to adhere to trademark renewal rules in order to maintain it. If renewal standards are followed, your registration—and the trademark protection it provides—can live on indefinitely.
- Section 8 Declaration
Between the 5th and 6th years after your mark is registered, the Declaration of Use and/or Excusable Nonuse under section 8 is due. This form confirms that your mark is still in use. It costs $225 per class.
- Combined section 8 Declaration and section 9 Renewal
As the name suggests, these are two combined forms. The Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9 is due between the 9th and 10th years after registration, then again every 10 years for the life of your trademark. Section 8 confirms your mark is still in use, and section 9 is the renewal application. This filing costs $525 per class.
How to Register a Federal Trademark FAQs
Why should I register a federal trademark?
The decision of whether to register a trademark hinges on if you want the benefits of federal trademark registration. These include trademark rights that are far-reaching and exclusive, the option to sue for trademark infringement in federal court, and the opportunity to prevent counterfeit goods with your trademark from entering the US. Federal trademarks are also able to use the symbol ®.
How much does it cost to register a trademark?
Trademark registration costs depend on the application you use to file how many classes you register in. You’ll pay $250 per class if you use TEAS Plus, or $350 per class if you use TEAS Standard.
If my trademark application is denied, can I get a refund?
No. The USPTO does not issue refunds for trademark applications that are unable to reach registration.
How long does it take to register a trademark?
It typically takes 1-1.5 years to register a trademark. There are factors that can lengthen the process, however, such as if you file your application with an intent-to-use basis, or receive substantive office actions.
Will the information in my trademark application be made public?
Yes. After you submit a trademark application, the information provided will become publicly accessible. This is why it’s important to read the application instructions closely, and to ensure that the information you include is information you’re comfortable releasing to the public sphere.
What is the ID.me step of the trademark filing process?
As of August 2022, there is a new identification verification step required prior to filing or editing a trademark application. The only way to avoid the ID.me process is to have an attorney process and file your trademark application. If you file your application yourself, you must complete this step.
The ID.me requirement can be completed online or on paper:
Your identification can be verified in two ways online: Through a selfie or a video call with an ID.me representative. With both options, you’ll also have to upload images of your government-issued IDs.
- Paper form
ID.me can be completed via a paper form. This option involves showing two of your government-issued IDs to a notary and mailing the original, notarized form to the USPTO at:
Mail Stop EBC
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.