How do I register a trademark?


Trademark users apply for federal registration with an application to the USPTO. If the applicant is already using the mark in commerce, the application is considered an “actual use” application. If the applicant is not yet selling goods or services using the mark, but intends to do so in the future, the application is considered an “intent-to-use” application. The intent-to-use process allows users to secure their rights as early as possible by getting a priority filing date with USPTO. Intent-to-use applications proceed through examination to the stage in which they reach allowance. However, an intent-to-use mark will not fully register until the applicant proves to the USPTO that the mark is actually being used in commerce.

This leads to a first common question:

How long does it take to get a trademark registration?

There are many issues that can come up in the examination and publication stages of an trademark application and each can affect the timeline. When an examiner raises an issue, the applicant typically has a six-month period to resolve the issue, so the longer the applicant takes, the longer the trademark process takes. However, in some cases the resolution of a trademark may depend on the timeline for another mark, such as when an application has been cited against an applicant in a “prior pending application advisory.” Also, if the applicant enters arguments in response to a substantive refusal, the Examiner will take time to review those arguments and make additional decisions, which again extends the timeline.

Aside from the periods for replying to issues, there are administrative lag times in the pendency of an application that can cause the application further delay. For example, while the publication period described below is typically 30 days, there is time between the examiner approving the application for publication and it actually publishing and again time from the completion of the publication period to the next step taken by the examiner.

The short answer to how long does a trademark registration take is, “it depends.” For example, an applicant could extent the Statement of Use deadline as far as possible (described below), extending the application process timeline to four years or more. On the other hand, an in-use applicant with no issues in the registration process could get an application through in 9-10 months. We estimate that on average, most applications filed by RPL take about a year to register.

As noted above, the trademark application process proceeds in two stages – the examination and publication. If the mark makes it through both stages, it proceeds to registration for in-use marks and allowance for intent-to-use marks.

The following is a summary description of the stages of the trademark process and the various requirements that can be found along the way.

Initial examination

The USPTO assigns an examining attorney to each new application. The examining attorney conducts the examination of the mark. During this examination, the examiner reviews the application to determine if it is eligible for registration. Part of this review includes a search of other marks on the register to make sure the applied-for mark does not conflict with previously-registered marks. If it does, the examiner will issue a refusal to register based on likelihood of confusion.

The examination may also result in a number of requests for amendments to the application, ranging from disclaimers to translations to amendments to the description of goods and services.

Substantive refusals

Substantive refusals are objections that examiners may make to applied-for because of the nature of the mark itself. These objections result in a refusal to register. The main substantive refusals include: likelihood of confusion, lack of distinctiveness (e.g., generic or descriptive), merely informational, disparaging, and deceptively misdescriptive.

Likelihood of confusion

A likelihood of confusion refusal is one of the most common and difficult substantive issues to overcome in a trademark application. A likelihood of confusion refusal cites one or more registered marks as a bar to the registration of the applied-for mark because the registered marks are so similar to the applied for mark that confusion among consumers may result.

Basis of a Likelihood of confusion refusal

Marks do not need to be identical in order to be similar enough to give rise to a likelihood of confusion refusal. Trademark similarity is based on sight, sound and meaning. If marks are similar on one or more of those bases, they may give rise to confusion.

Beyond trademark similarity, examiners also look to the goods and services the respective marks cover to determine if the goods and/or services are related. The goods and services of similar marks must be related in order to give rise to a likelihood of confusion refusal.

Options for overcoming Likelihood of Confusion

Applicants may respond to likelihood of confusion refusals with arguments against the examiner’s reasoning in the refusal. These arguments most commonly include, as applicable, an explanation of why the marks are not confusingly similar and why the goods or services are not confusingly similar. The applicant may also submit evidence of third-party registrations to advance dilution arguments.

The application examiner will then review the arguments and either withdraw the refusal if he or she is persuaded by the applicant or maintain the argument and issue a final refusal.

The strength of an applicant’s arguments against likelihood of confusion will depend on how strong the confusion was to begin. In some cases, a conflicting mark is nearly identical on both the similarity to the applied-for mark and the applied-for mark’s goods. In these situations, overcoming the refusal is difficult.

In other cases, examiners make likelihood of confusion refusals that overreach. These situations present the applicant with more material for making a persuasive argument to the examiner.

RPL assesses likelihood of confusion refusals with objectivity and gives its clients the recommendations they need to make a decision about fighting a likelihood of confusion refusal.

Lack of Distinctiveness

Trademarks are categorized according to their distinctiveness. There are five levels of distinctiveness. From least distinctive to most distinctive the levels are:  generic, descriptive, suggestive, arbitrary and fanciful. Generic marks cannot be registered. Descriptive marks can be registered (with limited rights) under certain conditions. Suggestive, arbitrary, and fanciful marks are considered to be inherently distinctive enough to register. Examples of each are provided below.

Genericness refusals

Generic names are the commonly used name of a product or service itself. They cannot receive trademark protection. Some examples of terms that have been held to be generic are aspirin for pain medication, bundt for coffee cake, hoagie for a type of sandwich, and polo for a polo shirt. If a registered trademark becomes generic, it may be invalidated. It is easy to understand that it would be against public policy for a single trademark owner to have exclusive rights to advertising that their product is a “car.”

The test for genericism is whether the primary significance of the applied-for mark to the relevant public is its generic meaning. In order to show this, examiners must accompany generic refusals with evidence showing the association in the public’s mind between the goods or services and the generic term.

Applicants may attempt to overcome genericness refusals by arguing that the examiner’s evidence does not demonstrate genericness. In our experience, examiners typically have strong support for genericness when they make this type of refusal.

Descriptiveness refusals

Descriptive marks are marks that describe the good or service it is supposed to cover or marks that description a main feature or function of the good or service. Descriptive marks are not inherently descriptive, but they may acquire descriptiveness over time if they have been used extensively in connection with goods and services.

Some descriptive marks are readily apparent as descriptive. For instance, a string of adjectives describing a product is easily identifiable as descriptive. Likewise, using a generic word for a product and adding “Company” or “Store” to it is clearly descriptive.

However, descriptiveness refusals sometimes apply to marks that are the line between descriptiveness and suggestiveness. Also, descriptiveness refusals may apply to features of a product that are not typically thought of as central to a product. For instance, marks that reflect the shape of a product are often subject to descriptiveness refusals.

Overcoming a descriptiveness refusal requires arguments in opposition to the finding or evidence that the descriptive mark has acquired distinctiveness. Applicants who are unsuccessful or unable to advance these arguments may amend their applications to the Supplemental Register and register it there, receiving some rights associated with Principal Register registration, but, crucially, not a presumption of exclusive use. Once a descriptive mark has attained acquired distinctiveness, mark holders may attempt to re-apply on the Principal Register.

Descriptive issues and descriptiveness-like issues apply to other features of marks, even if those features are not descriptive in a traditional way. For these objections, Supplemental Register protection is also available, with an option to re-apply on the Principal Register once the marks have acquired distinctiveness.

Additional examples of descriptiveness are provided below:

Geographic descriptiveness

Marks that refer to the geographic origin of a product (without any other non-descriptive content) are considered geographically descriptive.

Mere laudatory phrases

Marks that add laudatory phrases to descriptive words are nonetheless descriptive. For example, “Best _______ Ever” marks are considered descriptive by the Trademark Office on the theory that “best [blank] ever” is a merely laudatory phrase.


Marks that primarily function as surnames are not descriptive, per se, but they require acquired distinctiveness to be registered.

Suggestive, arbitrary, and fanciful

Suggestive, arbitrary, and fanciful marks are considered to be inherently distinctive, meaning that they may be given exclusive trademark protection without any evidence of prior use of the mark.

Suggestive marks are trademarks that tell the consumer something about the goods or services they cover, but require some mental leaps to arrive at the right conclusion about the product or service. IGLOO for coolers is suggestive, as is ICE MOUNTAIN for water.

Arbitrary marks are marks that have some meaning but are used for goods and services where the meaning of the word has no relation. “Apple” for apples is generic, but APPLE for computers is arbitrary.

Fanciful marks are made up words that do not have a meaning that can be inferred from the components of the word. These types of marks are common in the pharmaceutical industry and you can simply think of the last pharmaceutical advertisement you have seen for an example of a fanciful mark (e.g., Advil, Tylenol, etc.).

Merely informational

A merely informational word or phrase is a phrase that does not function as a trademark because it reflects statements that are information in nature, common laudatory phrases, or statements that would ordinarily be used in business or other fields.

Examiners must supply evidence showing that the alleged merely information mark is perceived by the public as being merely informational. When an examiner’s evidence is questioned, it can help to reverse a finding that a mark is merely informational.

Matter that may disparage, falsely suggest a connection, or bring into contempt or disrepute

Marks that disparage, falsely suggest a connection, bring into contempt or bring disrepute a person, institution, belief, or national symbol are not registrable on the Principal Register or the Supplemental Register.

Deceptively Misdescriptive

Deceptively misdescriptive marks are marks that include a geographic designation that consumers are likely to believe is in reference to the product, but is not actually the product’s geographic region of origin. For example, “Napa” for wine from the Napa Valley would be geographically descriptive. “Napa” for wine from Michigan would be deceptively misdescriptive.

Deceptively misdescriptive marks are not registrable on the Principal or Supplemental Registers.

Non-substantive refusals

Some issues that arise in a trademark application have to do with the elements of the application aside from the mark itself. These include the description of goods and services, the specimen, and the additional statements an applicant may make to clarify the details of their application.

An issue with these elements is not usually fatal to the application. However, in some cases these issues can affect the ultimate scope of the application and the way the application moves forward. It is important to address these issues in a that satisfies all of the Examiner’s requirements and does not introduce additional issues.

Amendment to the goods/services

Every trademark application includes  a list of the goods and services the mark covers or will cover. These descriptions are categorized in one of forty-five classes. The description itself must include particular wording and sufficient detail to avoid uncertainty or lack of clarity. For example, the word “including” is not typically allowed in trademark descriptions because it implies that there is more than what is listed after “including.” Instead of “including,” trademark applications say “namely.”

Sometimes descriptions of goods and services include improper wording, insufficient detail, or they are categorized incorrectly. These types of errors are typically fixable with simple amendments to the description of goods and services.

Specimen refusal

In both intent-to-use and in-use applications, applicants must supply evidence of the mark in use. The intent-to-use applicant may supply the evidence during the examination of the mark with an Allegation of Use or after receiving a Notice of Allowance with a Statement of Use.

The evidence of use is called a specimen of use. To be accepted as sufficient evidence of use, a specimen must be of the nature that is required for the good or service covered by the application, it must show the mark in use and it must include content from which the Examiner may determine that the mark is used in connection with the listed goods or services. Specimen refusals occur if the specimen is not an acceptable type or if the mark is not shown in use.

If a specimen does not meet the requirements, the Examiner of the mark will issue a specimen refusal. To overcome this refusal, the applicant must submit a verified substitute specimen. For in-use applications, this means a substitute specimen that was in use as least as early as the filing date of the application. For intent-to-use applications, a substitute specimen must have been in use at least as early as the filing date of the Allegation of Use or the due date of the Statement of Use (if filing the specimen after receiving a Notice of Allowance).

If the applicant does not have a verified substitute specimen available, additional measures may be required to satisfy the specimen requirement. For in-use applications, this may involve switching to an intent-to-use basis until an acceptable specimen is available.

One important thing to keep in mind for intent-to-use applicants is that a Statement of Use may not be withdrawn after submitted, so the specimen for the Statement of Use must meet all the requirements or there must be an acceptable alternative in the case of a specimen refusal. A specimen refusal on a Statement of Use without an  acceptable alternate could leave the applicant with no choice but to forfeit the application.

All specimens must show the mark in use. This means that the mark is displayed on its own in a marquee position on the specimen. The specimen must also include content that relates to the goods and services that the application covers.

In addition, the specimen must be of a type that is required for goods and services.

Acceptable specimens for goods

Specimens for goods must show the mark on the actual good, on a tag or label affixed to the goods, on product packaging or instruction manuals, or on a point-of-sale display. Marketing and advertising materials are generally not acceptable specimens of use for marks.

Acceptable specimens for services

Specimens for services may include marketing or advertising materials that show the mark in use in connection with services. Other acceptable specimens of use for services include business cards, word product, company letterhead, or invoices.

Disclaimer Requirement

Some marks that are non-descriptive nonetheless include generic or descriptive content. In these cases, the descriptive content must be disclaimed. The effect of a disclaimer is to say that the applicant will not claim rights to exclusivity over the disclaimed content on its own.

If the disclaimer requirement is for descriptive wording as opposed to generic wording, the applicant may avoid the disclaimer requirement if the mark has acquired distinctiveness.

Translation requirement

Marks that include foreign language wording must disclose the English translation of the foreign word.

Requirement of additional classes

In some cases, the description of goods and services includes goods or services that belong in other classes beyond what was applied for. In these cases, the content included in the original description of goods and services may fit in one or more class. When this happens, the Examiner will give the applicant the opportunity to amend the description of goods and services and add the other classes that apply.

Adding classes requires additional filing fees. However, applicants do not have to pursue every class that is available to them based on their original description. They also have the option of deleting the excess content and proceeding without additional classes, keeping in mind that whatever is included in the final application will be what is protected by the mark.

Substitute drawing

Logo applications must include a high-resolution image of the applied-for mark. Examiners may request substitute drawings when logo images lack the required resolution.

Marks that require additional action

Some marks require documentation beyond the application in order to register. For example, non-traditional marks such as scents, movements or three-dimensional objects may require extensive evidence of acquired distinctiveness, detailed descriptions of the marks and additional drawings.

Three types of marks described in more detail below involve additional documentation to register: certification marks; names; and collective membership marks.

Certification marks

Certification marks are marks that the mark holder uses to certify some quality about the goods or services of others. These differ from traditional marks because the mark holder is not actually using the mark. Rather, third parties use the mark to indicate that they comply with the standards behind the mark.

Certification marks can certify geographic origin, quality standards, or labor standards. In order to secure a certification mark, applicants must explain how they certify compliance with the standards that the mark signifies.

Trademarks for someone’s name

Applicants seeking to register marks based on a living person’s name, signature or portrait must disclose that the mark identifies a living person and supply additional documentation showing that the individual the mark identifies consents to the mark.

Collective membership marks

Collective membership marks are marks used by members of a particular organization to show they are members of it. Registration of collective membership marks requires an explanation of how the mark holder controls the use of its mark by its members.

Publication and Period for Opposition

Once a mark applicant has made it through the examination of the mark with no issues or no remaining issues, the mark proceeds to publication in the Trademark Official Gazette. The date of publication initiates a 30-day period for opposition.

Third parties may view the Trademark Official Gazette and determine if the registration of the newly-published mark will affect their rights. If a third party has a problem with the registration of a published mark, they may use the period of opposition to resolve their issues with the applicant for the mark or file an opposition proceeding in an effort to stop the registration of the mark.

Extension of time to oppose

In some cases, third-parties will file an extension of the opposition period in order to investigate the matter, reach out to the applicant or attempt to resolve the issue without an opposition proceeding. Opposition extensions may last up to ninety days.


Once the applicant has made it through the examination and opposition period with no remaining issues, the application will proceed to registration or it will receive a Notice of Allowance.

In-use applications proceed to registration after the examination and period for opposition conclude. Intent-to-use applications receive a Notice of Allowance indicating that the mark has been approved for registration pending the completion of a Statement of Use showing that the mark is being used in commerce.

Notice of Allowance

The Notice of Allowance date initiates a 6-month deadline for filing a Statement of Use. The Statement of Use shows that the mark is being used in commerce.

Statement of Use

A Statement of Use requires a specimen showing the mark in use and the date the mark was first used in commerce anywhere in connection with the goods/services and the date the mark was first used in commerce in the United States in connection with the goods/services.

In order to list the date of first use in commerce, the marks must be used in commerce. For goods, the date of first use corresponds to the earliest date that the applicant sold and fulfilled its goods in the ordinary course of business. For services, the date of first use is the first date the mark was used in connection with the services while the applicant rendered the services.

Extension of time to file the Statement of Use

If the applicant is not offering its goods/services in commerce in time to meet the Statement of Use deadline (six months from the mailing date of the Notice of Allowance), the Applicant may file an extension to file the Statement of Use. The extension request will give the applicant an additional six months to file the Statement of Use.

Final deadline for Statement of Use

Applicants may continue to file six-month extensions to submit the Statement of Use, but they must submit a Statement of Use (and hence must be using the mark in commerce) but the three-year anniversary of the mailing date of the Notice of Allowance.