The trademark prosecution process is how you take a mark from an idea to a federally registered trademark at the United States Patent and Trademark Office (USPTO). It runs from the search you do before filing, through an examining attorney’s review, a 30-day public opposition window, and finally the issuance of a registration certificate that gives you a nationwide presumption of ownership. When nothing goes wrong, the whole thing takes roughly 10 months. Contested applications take considerably longer.
“Prosecution” here has nothing to do with criminal law. In intellectual property practice, it just means moving an application through a government agency. Every exchange between you (or your attorney) and the USPTO from the day of filing until registration or final refusal is part of it.
The reason to see it through is the legal presumption a federal registration creates: that you own the mark and have the exclusive nationwide right to use it for the goods or services listed.1GovInfo. 15 U.S.C. 1057 – Certificates of Registration That shifts the burden onto anyone who later wants to challenge you, which is a much stronger position than unregistered common law rights.
Decisions to Make Before You File
Search for Conflicts First
A trademark search is the single most valuable step you can take before spending money. The examining attorney will run their own search of the USPTO database, and a “likelihood of confusion” finding is the most common reason applications fail. Catching a conflict yourself is far cheaper than discovering one after packaging is printed and a website is live.
At minimum, search the USPTO’s Trademark Electronic Search System for identical and similar marks in related goods or services. A professional clearance search adds pending applications, state registrations, common law uses, and domain names.
The USPTO weighs two main things when comparing marks: how similar the marks are in sound, appearance, and meaning, and how related the underlying goods or services are.2United States Patent and Trademark Office. Likelihood of Confusion Marks don’t need to be identical to conflict. A similar commercial impression on related products is enough for a refusal.
Classify Your Goods or Services
Every application identifies specific goods or services under the international Nice Classification system. Goods sit in classes 1 through 34, services in classes 35 through 45.3United States Patent and Trademark Office. Nice Agreement Current Edition Version – General Remarks, Class Headings and Explanatory Notes You pay a separate filing fee per class, so precision matters for both protection and cost. Too broad a description gets rejected; too narrow limits your rights. The USPTO’s Acceptable Identification of Goods and Services Manual lists pre-approved descriptions.
Pick a Filing Basis
Your application needs at least one filing basis telling the USPTO whether you already use the mark or plan to.4United States Patent and Trademark Office. Basis The two common ones are:
- Use in commerce, Section 1(a). You are already selling under the mark and can submit a specimen showing marketplace use.
- Intent to use, Section 1(b). You have a genuine intent to use the mark but haven’t started. You can file now and prove use later.5United States Patent and Trademark Office. Trademark Applications – Intent-to-Use (ITU) Basis
Intent-to-use lets you lock in an earlier filing date while you finish building the brand. That priority date can decide who wins if a similar mark shows up later.
Filing the Application
Applications are filed electronically through the USPTO’s Trademark Center.6United States Patent and Trademark Office. Trademark Process You’ll submit the mark itself (standard character or design), applicant name and address, the goods or services and their classes, your filing basis, and a specimen if you’re filing on current use.
A specimen has to show the mark being used the way consumers actually see it. For goods, that usually means a photo of the mark on a label, tag, packaging, or the product. For services, it’s typically an advertisement, brochure, or website screenshot. Website screenshots need the URL and the date you captured them.7United States Patent and Trademark Office. Drawings and Specimens as Application Requirements
As of January 2025, the USPTO consolidated its former TEAS Plus and TEAS Standard options into a single base application fee of $350 per class.8United States Patent and Trademark Office. Summary of 2025 Trademark Fee Changes A mark covering goods in one class and services in another costs $700 at filing. More fees can apply later for amendments, extensions, or intent-to-use follow-ups.
Once the USPTO confirms the filing meets minimum requirements, it assigns a serial number.6United States Patent and Trademark Office. Trademark Process Check status every three to four months so you don’t miss a deadline.
Examination and Office Actions
A USPTO examining attorney reviews your application for legal compliance and whether the mark is registrable. That includes searching for conflicts, checking the meaning of your mark in your industry, verifying the goods and services identification, and confirming filing basis requirements.9United States Patent and Trademark Office. Examination of Your Application As of early 2026, the average wait from filing to the first examining action is about 4.5 months.10United States Patent and Trademark Office. Trademark Processing Wait Times
If the examiner finds problems, they issue an Office Action explaining each refusal or request. You have three months to respond, with one three-month extension per Office Action available for an additional fee.11United States Patent and Trademark Office. New Three-Month Deadline for Responding to Pre-Registration Office Actions Miss the deadline and the application is abandoned. Revival is possible only by showing the delay was unintentional.12United States Patent and Trademark Office. Reviving an Abandoned Application
Take the first Office Action seriously. A weak response often triggers a final refusal, and your only remaining route is an appeal to the Trademark Trial and Appeal Board.
The most common substantive refusals are:
- Likelihood of confusion with an existing registered or pending mark on related goods or services.2United States Patent and Trademark Office. Likelihood of Confusion
- Merely descriptive marks that directly describe an ingredient, quality, feature, or purpose of the goods or services.13United States Patent and Trademark Office. Possible Grounds for Refusal of a Mark
- Marks primarily a surname, unless you can show consumers already tie the name to your brand.
- Ornamental use, where the mark decorates the product instead of identifying its source.
A descriptive refusal isn’t necessarily the end. You can argue acquired distinctiveness through extensive use and promotion, backed by evidence like advertising spend and consumer recognition.14United States Patent and Trademark Office. How to Claim Acquired Distinctiveness Under Section 2(f)
Publication and Opposition
When the examiner approves your mark, it publishes in the Trademark Official Gazette, a weekly online notice.15United States Patent and Trademark Office. Approval for Publication Anyone who believes your registration would damage them has 30 days from publication to file an opposition or ask for an extension.16United States Patent and Trademark Office. Opposition Period and Extensions of Time to Oppose
An opposition is a proceeding before the Trademark Trial and Appeal Board (TTAB) that resembles a small federal court case, with pleadings, discovery, trial, and briefing.17United States Patent and Trademark Office. Trademark Trial and Appeal Board (TTAB) FAQs Most oppositions settle. A contested one can add a year or more to the timeline. Clear the window unchallenged, or win the opposition, and the application moves toward registration.
What Happens Next for Intent-to-Use Applications
If you filed on intent to use, clearing publication doesn’t produce a registration. The USPTO issues a Notice of Allowance instead, and you have six months to file a Statement of Use with a specimen.18United States Patent and Trademark Office. Intent to Use (ITU) Forms
Need more time? You can request up to five six-month extensions at $125 per class each. Total time caps at three years from the Notice of Allowance.18United States Patent and Trademark Office. Intent to Use (ITU) Forms Miss that ceiling with no Statement of Use on file and the application is abandoned. This is one of the most common ways intent-to-use applications die: not through refusal, but through a missed deadline.
Registration and the ® Symbol
Once every requirement is met, the USPTO uploads an electronic certificate of registration to its Trademark Status and Document Retrieval system.19United States Patent and Trademark Office. Receiving Your Trademark Registration The certificate is prima facie evidence that the mark is valid, that you own it, and that you have the exclusive right to use it nationwide for the listed goods or services.1GovInfo. 15 U.S.C. 1057 – Certificates of Registration
You can now use the ® symbol with the mark, typically as a superscript to the right. One important limit: the ® can only appear next to the mark for the specific goods or services listed in your registration.20United States Patent and Trademark Office. Trademark Registration Toolkit Using it on products or services outside that list is misleading and can cause legal problems.
Keeping the Registration Alive
Registration isn’t the finish line. Miss a required maintenance filing and the registration is canceled, no matter what you spent getting it.
Between the fifth and sixth year after registration, you must file a Section 8 Declaration of Use with a current specimen and $325 per class. A six-month grace period exists after the sixth year, with a $100 late fee per class; miss both and the registration is canceled.21United States Patent and Trademark Office. Post-Registration Timeline
Every ten years, you file a combined Section 8 and Section 9 renewal at $650 per class.22United States Patent and Trademark Office. Trademark Fee Information The same six-month grace period and $100 surcharge apply. Calendar these dates the day the certificate arrives. The USPTO sends courtesy reminders, but the legal duty to file on time is entirely yours.
At the five-year mark, you can also file a Section 15 Declaration of Incontestability alongside your Section 8, for a combined $575 per class.22United States Patent and Trademark Office. Trademark Fee Information Incontestability closes off most of the grounds on which a competitor could later challenge the registration. If the mark qualifies, file it.