Registering and Maintaining a Trademark

Before filing.

Clearance and registration answer different questions. Clearance investigates potential conflicts; an application asks the USPTO to register a particular mark for identified goods or services. A favorable application outcome is not a guarantee that every use is free from dispute.

The application should name the correct owner and describe the actual mark. A word mark and a particular logo may involve different filings. The identification of goods or services defines important boundaries and should reflect the business's present use or genuine plans under the selected filing basis.

Use and intent to use.

A common filing basis is current use in commerce under Section 1(a). Another is a bona fide intent to use the mark under Section 1(b). Intent-to-use filing does not dispense with the need to establish qualifying use before registration under that basis.

After an intent-to-use application clears examination and the opposition stage, the USPTO ordinarily issues a notice of allowance. The applicant then has six months to file a statement of use or a qualifying extension request. Up to five six-month extensions may be available, subject to the applicable requirements. A notice of allowance is not a registration certificate.

Foreign-registration and international-registration bases follow additional rules. Their different requirements should be checked before using the domestic-use sequence as a calendar.

Examination and office actions.

The examining attorney reviews both substantive and procedural requirements. An office action may raise a conflicting mark, descriptiveness, an unacceptable specimen or an issue with the identification of goods or services. The response must address the actual grounds given.

For most pre-registration office actions in applications under Sections 1 or 44, the response period is three months, with an optional paid three-month extension. Madrid applications have a different six-month response period. The actual notice and governing rules control; other USPTO communications may have different deadlines.

Publication and opposition.

Approval for publication is an intermediate step. Publication ordinarily opens a thirty-day period in which a party may oppose registration or request more time to oppose. An opposition is heard by the Trademark Trial and Appeal Board. It concerns registration, not a damages award for infringement.

An application based on qualifying use may proceed to registration after the relevant requirements are satisfied. An intent-to-use application still needs an acceptable use filing. Filing fees and the time already invested do not guarantee approval.

Evidence of use.

A specimen shows how the mark is actually used with the identified goods or services. It should be genuine evidence of the relevant use, not a mockup created to resemble commercial use. The mark, the identified goods or services and the specimen should fit together.

A company that sells both products and services may need different evidence for each. Records of labels, packaging, webpages and service advertising can help document use, but the statutory and USPTO requirements determine whether a particular specimen is acceptable.

Maintenance after registration.

For registrations based on Sections 1 or 44, a Section 8 declaration is generally due between the fifth and sixth anniversaries of registration. A combined Section 8 declaration and Section 9 renewal is generally due between the ninth and tenth anniversaries, then every ten years. Six-month grace periods are available with additional fees. These dates run from registration, not from the initial application.

Maintenance filings generally require accurate statements and evidence of continuing use, or a legally sufficient claim of excusable nonuse. Goods or services no longer supported should not simply be carried forward. International registrations extended to the United States under the Madrid Protocol use Section 71 maintenance and separate international-renewal procedures.

Incontestability is a separate filing.

An eligible Principal Register owner may file a Section 15 declaration after the required five consecutive years of post-registration use and satisfaction of the other statutory conditions. It is optional and does not replace the required maintenance filings. "Incontestable" also does not mean immune from every challenge or defense.

A practical example.

A business files for a mark before launching a product. It receives a notice of allowance, but manufacturing is delayed. The notice has not registered the mark, and the delay does not stop the six-month clock. The application requires a timely, appropriate use filing or extension while the remaining requirements are addressed.

Sources.

• USPTO, Trademark scope of protection: mark and goods-or-services boundaries. uspto.gov (retrieved September 30, 2026).
• USPTO, Trademark process: application, examination and publication. uspto.gov (retrieved September 30, 2026).
• USPTO, Section 1(b) timeline: intent-to-use applications and extensions. uspto.gov (retrieved September 30, 2026).
• USPTO, Trademark Trial and Appeal Board: jurisdiction and function. uspto.gov (retrieved September 30, 2026).
• USPTO, Specimens: evidence of trademark use. uspto.gov (retrieved September 30, 2026).
• USPTO, Maintaining your federal registration: Section 8 and Section 9 filing windows. uspto.gov (retrieved September 30, 2026).
• USPTO, Keeping your registration alive: use, nonuse and Madrid distinctions. uspto.gov (retrieved September 30, 2026).
• USPTO, Post-Registration FAQs: Section 15 eligibility and effect. uspto.gov (retrieved September 30, 2026).

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This guide is general information, not legal advice. Law checked through September 30, 2026. See the Disclaimer.