Use in commerce
If you are already selling under the name, you file on use. The application includes a specimen showing the mark as customers see it, and no later proof of use step is needed.
The sequence
What happens after you file.
A US trademark takes most of a year. Here is the sequence, what the USPTO does at each stage, and what is actually required from you.
Proper Counsel PLLC is a New York law firm. Martin S. Hui handles United States trademark clearance and USPTO registration for startup founders.
The timeline
From filing to registration.
§ 01 DAY 0, WE FILE
The application goes to the USPTO with the mark, the owner, the classes, and the drafted description of goods and services. A serial number issues within days, and that number is how the application is tracked from then on.
§ 02 WEEKS 1 TO 2, RECEIPT
The USPTO confirms receipt of the filing and the application enters the examination queue. Nothing is decided at this stage. The record simply becomes visible on the register as a pending application.
§ 03 MONTHS 3 TO 6, EXAMINATION
An examining attorney reviews the application against the existing register and the statutory requirements. This is the stage where an office action can arrive. Queues move at their own pace, so the range is a range, not a schedule.
§ 04 MONTHS 6 TO 9, PUBLICATION
If the examining attorney approves the application, the mark publishes for opposition. Third parties then have thirty days to object, and that window can be extended on request.
§ 05 MONTHS 9 TO 12, REGISTRATION
Absent an opposition, the certificate issues. Applications filed on intent to use register after acceptable proof of use is submitted, which can extend the calendar.
Registration is not the last date on the calendar. Maintenance filings are due between years five and six, and again at year ten.
What an office action is
The examiner writes back.
An office action is a letter from the examining attorney asking for a change to the application or refusing it. The two most common reasons are that the mark resembles a mark already on the register, or that it merely describes the goods or services.
It is common, and it is not the end of the application. There is a deadline to respond, and a missed deadline abandons the filing. Responses are handled as part of the engagement, at no additional attorney fee.
Filing basis
Intent to use versus use in commerce.
Intent to use
If you are not selling yet, you file on intent to use. That secures a priority date now and requires proof of use later, before registration issues.
Most early-stage companies file on intent to use, because the name is chosen before launch. US trademark rights come from use of the mark, and filing sets a nationwide priority date as of the filing date. That date is the thing worth having: it fixes your place in line while the product is still being built.
Your part
What is actually required from you.
- Confirm the legal entity name and address that will own the mark.
- Confirm what the company sells, or will sell, in plain terms.
- Provide a specimen showing the mark in use when the time comes.
- Review the application before it is filed.
The Trademark Launch Kit is a $995 flat attorney fee covering knockout and full clearance search, attorney review and strategy call, and USPTO filing for one mark in up to three classes. USPTO government fees are separate and billed at cost: $350 per class, per mark.
Where this fits
The report decides. This page describes.
A clearance report tells you whether the name is worth this process. This page describes the process itself, start to certificate. When you are ready to look at your own name, the report and the flat-fee filing both live on Proper IP.